WIPO Activities Related to New gTLDs
For over a decade, WIPO has addressed questions raised by the intersection of the Domain Name System (DNS) and intellectual property (IP) laws. Notably, in 1998 and 2001 WIPO undertook two international consultation processes to develop specific related recommendations, including one that led to ICANN’s adoption of the Uniform Domain Name Dispute Resolution Policy (UDRP). In 2005, WIPO produced at ICANN's request, the report: "New Generic Top-Level Domains: Intellectual Property Considerations."
The DNS landscape appears set to undergo considerable change in the future, with significant trademark ramifications, following ICANN’s announcement of its plans for a potentially broad expansion of the existing number of gTLDs and also for the related introduction of internationalized (non-Latin script, e.g., Arabic, Chinese, Cyrillic) domain names (IDNs) at the top level.
WIPO continues to provide leadership in the development of solutions to tensions between the DNS and the IP system, and has been collaborating with ICANN in an attempt to safeguard existing intellectual property rights in the event that the introduction of new gTLDs will proceed as presently envisioned by ICANN. Such collaboration encompasses proposing, as outlined below, scalable dispute resolution procedures and policies to protect intellectual property interests in the DNS while striking a balance with the practical interests and legitimate expectations of the many DNS actors.
Pre- (TLD) Delegation Dispute Resolution Procedure
In December 2007, ICANN sought "Expressions of Interest from Potential Dispute Resolution Service Providers for New gTLD Program." In January 2008, the WIPO Center signaled its readiness to assist ICANN in devising and applying intellectual property-based dispute resolution procedures in relation to ICANN’s New gTLD Program. From that time, using the WIPO "Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet" as its foundation, the WIPO Center has collaborated with ICANN on the development of substantive criteria and procedural rules for pre-(TLD) delegation dispute resolution for trademark-based "Legal Rights Objections" (LRO) as set out in section 3.4.2 of ICANN's Draft Applicant Guidebook, Version 2. The WIPO Center has also subsequently accepted to administer disputes under the LRO Procedure.
Post- (TLD) Delegation Dispute Resolution Procedure
From early 2008, the WIPO Center has advocated to ICANN the possible advantages of a permanent administrative (court alternative) option for brand owners to file objections against a registry operator whose operation or use of an approved new gTLD is alleged to cause or materially contribute to trademark abuse. On February 5, 2009, the WIPO Center communicated to ICANN a concrete substantive proposal for such a trademark-based post-delegation dispute resolution procedure aimed at addressing such conduct directly at the source. This proposal, published in a letter of March 13, 2009, is intended to act as a form of neutral, outsourced, and standardized assistance to ICANN’s own compliance oversight responsibilities while also encouraging responsible conduct by relevant actors and generally enhancing the security and stability of the DNS.
Given the perceived convergence of registry, registrar, and registrant roles within the DNS, the WIPO Center has further recommended to extend the concept behind this proposed post delegation dispute resolution procedure for new gTLD registries to also address registrar conduct through ICANN registrar contracts. Such a higher-level procedure to address registry and registrar conduct is a critical foundation to effective rights protection mechanisms in new gTLDs. Without such a procedure, DNS stakeholders, including trademark owners, domain name registrants, dispute resolution service providers, and indeed registries and registrars themselves may be faced with perpetual resource consumptive disputes.
Complementary Rights Protection Mechanisms
While the UDRP will remain an important curative tool for particular disputes involving the considered transfer of a disputed domain name to the trademark owner, the WIPO Center has also advocated the additional availability of a range of appropriate rights protection mechanisms to safeguard legitimate trademark interests in the DNS.
In a letter of April 3, 2009, the WIPO Center communicated to ICANN a discussion draft for a rights protection mechanism to apply to second (and lower) level domain name registrations in new gTLDs. Such an expedited (domain name) suspension mechanism is intended to expand present options for mark owners to combat cybersquatting in a time and cost effective manner, and would be a further streamlined narrowly tailored complement to the existing UDRP option.
ICANN Implementation Recommendation Team
In response to public comments made to ICANN’s Draft Applicant Guidebook, ICANN defined trademark protection as an overarching issue requiring further consideration. The ICANN Board resolved in March 2009 to request that the ICANN Intellectual Property Constituency (IPC) convene an “Implementation Recommendation Team” (IRT) to develop and propose solutions to the overarching issue of trademark protection stemming from ICANN’s New gTLD Program.
The IRT published its Draft Report on April 24, 2009 and its Final Report on May 29, 2009, both of which distilled a range of differing rights protection mechanism proposals including inter alia, WIPO’s Post-Delegation procedure and expedited suspension mechanism proposals.
The WIPO Center provided extensive comments on the IRT Reports e.g., through public letters (WIPO letters of May 10 and June 18, 2009). The WIPO Center in particular called for system design that minimizes burdens on users and stakeholders and also for further reflection on operational realities in implementing such systems. The WIPO Center shares with the IRT the opinion that there are clear benefits of an expedited suspension mechanism but has expressed some constructive concerns that the suspension mechanism as proposed by the IRT may require some refining in order to achieve optimal interoperability with the UDRP, and also in terms of the provided remedy and whether there is a need for panel appointment in all cases given the purported goal of a time and cost efficient filtering mechanism for clearly abusive cases. The WIPO Center additionally noted the need for any trademark-based Post-Delegation procedure involving registries and registrars to provide the option for trademark owners to initiate administrative proceedings subsequent to and/or separate from ICANN’s contractual compliance process.
Continuing DNS Policy Discussions
ICANN organized a round of public consultations in June and July 2009, regarding the overarching issue of trademark protection stemming from ICANN’s New gTLD Program, at which the WIPO Center was represented. The WIPO Center expects to contribute to continued discussions aimed at addressing trademark abuses in the DNS at multiple levels, including further opportunities for collaboration with ICANN staff and varied DNS constituents.
