Trademark violation: ICANN’s Noncommercial Users petition board

Remmy Nweke/DigitalSENSE BusinessNews

The Non-Commercial Stakeholders Group (NCSG) of the Internet Corporation for Assigned Names and Corporation (ICANN) has filed a petition seeking Request for Reconsideration with to the Board over trademark violation claims.

This is coming as the alleged trademark violation was fueled with regards to ICANN’s staff decision to expand the scope of the trademark claims service beyond that provided by community consensus policy and in contradiction to ICANN Bylaws.

Confirming this to DigitalSENSE Business News, the chairperson, Noncommercial Users Stakeholder Group, Ms. Robin Gross, noted specifically the issue of ICANN staff’s unilateral decision to adopt the “trademark+50” proposal for new domains, which would provide trademark holders who have previously won a Uniform Domain-Name Dispute-Resolution Policy (UDRP) or court decision with rights to 50 additional derivations of their trademark in ICANN’s Trademark Clearinghouse (TMCH).

  

Ms Gross pointed out that under staff’s plan, large trademark holders that register in the clearinghouse will be provided thousands of derivations of their trademarks since each separate country’s registration of the same trademark provides the brand owner with an additional 50 entries in the TMCH.

She said that the entries in the TMCH trigger infringement warning notices to domain name registrants which could lead to increased liability for registrants, discourage lawful registrations, and chill speech on the Internet.

DigitalSENSE Business News recalls that based on ICANN’s bottom-up community-developed process for creating policy had approved of a TMCH model to allow “exact matches” of trademarks only to be placed in the TMCH. 

For instance, in 2007, ICANN’s Generic Names Supporting Organization (GNSO) Policy Council, including representatives from the Intellectual Property and Business Constituencies, approved the GNSO recommendations that created special protections for trademark rights by a supermajority vote. 

Ms Gross, who is director of IP Justice says that as part of the multi-year consensus process, both the subsequent Special Trademarks Implementation (STI) team and the Implementation Review Team (IRT) considered the issue of providing rights to exact matches or additional derivations, and both community-developed teams specifically opted for exact matches only to be placed into the TMCH.

She pointed out that ICANN’s president testified before the United States Congress in 2012 that expanding the scope of the TMCH further would be inappropriate since it would create new rights that do not exist in law and ICANN should not be creating unprecedented rights.

Ms Robin Gross, chair, NCSG

“Many months after the final TMCH model of exact matches only was published in ICANN’s Applicant Guidebook and new domain businesses relied on it when filing their applications, ICANN’s Intellectual Property and Business Constituencies lobbied ICANN’s new CEO to make drastic changes to the community-developed policy and grant additional trademark rights in the TMCH,” part of the letter to ICANN board read.

It was on the aforementioned premise among others that NCSG filed comments on the proposed policy changes and warned against re-opening previously closed consensus agreements and circumventing ICANN’s stated bottom-up policy development process.

Lamenting that the ICANN staff email sent on 20 March 2013, violated the existing principles of trademark clearinghouse, insisting that by the staff announcement it had expanded the scope of the trademark claims service to give trademark holders rights to 50 additional derivations of their trademark, in contradiction to GNSO developed policy of exact matches only and the subsequent requested GNSO Council guidance on the matter

 

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