NCSG Principles for trademark protection in new gTLDs

[Mary Wong]

Expanding a little on Avri's point (below), members may recall that in 2007, the GNSO convened a working group (WG) to consider means for Protecting the Rights of Others. In its final report, the WG did not reach consensus on every point, although what Avri pointed out is a major recommendation in the WG's report. So, as we consider how best to handle the most recent developments in the trademark/new gTLD interface - including the Board's request to the GNSO to respond to the possible establishment of a Trademark Clearinghouse and a rapid suspension system for blatant infringements - members may find the attached background documents useful, particularly as one of the Board's requests to the GNSO community was to consider the extent to which these two mechanisms conform to the GNSO's own previous recommendations.
 
The two attached documents are the Final WG Report on Protecting the Rights of Others (which includes an attempted, but ultimately not agreed on, definition of what those rights are), and the ICANN staff's subsequent summary of the report in an Explanatory Memorandum to (I believe) the initial DAG.
 
Some of you may also know that WIPO has just proposed some form of rapid suspension that will complement the existing UDRP - the GNSO's Special Trademark Interests (STI) review team (the NCSG members of which Kathy listed in her email) will likely be considering how this development might have an impact on the GNSO policy recommendations for a rapid suspension system going forward.
 
We have a wealth of expertise and experience amongst our members on technical, operational and policy aspects of the new gTLD issue, so please contact any of our STI team members with your suggestions and questions, or post them to this list.
 
Thanks
Mary
 
 
 
Mary W S Wong
Professor of Law & Chair, IP Programs
Franklin Pierce Law Center
Two White Street
Concord, NH 03301
USA
Email: mwong at piercelaw.edu
Phone: 1-603-513-5143
Webpage: http://www.piercelaw.edu/marywong/index.php
Selected writings available on the Social Science Research Network (SSRN) at: http://ssrn.com/author=437584


>>> Avri Doria <avri at LTU.SE> 11/4/2009 11:15 PM >>>
Hi,

One other thing we discussed, though I do not know if there was  
consensus on it was that, none of these mechanisms could be mandatory.

i.e.
- If a registry wants to use a Clearinghouse ok, but it can't be  
required.
- Likewise if a Registry want to allow for URS, it may, but it should  
not be required.

a.

On 4 Nov 2009, at 23:02, Kathy Kleiman wrote:

> So we (NCUC/NCSG) responded. During our all-day meeting on Tuesday,  
> we spent a good amount of time on these new gTLD issues. We reviewed  
> the Trademark Clearinghouse Staff Report and, after discussion,  
> decided on some key principles:
> ==> While we believe that the best place for trademark clearing is  
> outside of ICANN altogether, if we must have a TM Clearinghouse,  
> then the rules must be explicit as to the limits and protections for  
> Domain Name Registrants, including:
> - The Clearinghouse must not expand trademark law beyond national law;
> - Registrants must not be dissuaded from registering domain names to  
> which they have a right or would otherwise be entitled;
> - The Clearinghouse should minimize Chilling Effects; and
> - A clearer IP claims process and sunrise period is required.
> We also reviewed the URS Staff Report and expressed our deep concern  
> about this Rapid Takedown System for Domain Names. We are deeply  
> concerned about its creation, and wonder at its rationale, but  
> should it go forward, we noted that it must embrace fundamental  
> principles:
> - Due Process;
> - An Assumption of Innocence and Good Faith of the Registrant;
> - A Fair Right of Response;
> - Have a Clear definition of egregious conduct;
> - Require a High burden of proof,
> - Properly protect Registrant rights, and also
> - Provide a process inexpensive enough for small noncommercial  
> trademark owners to pursue.
>
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