One of the primary discussion topics at ICANN 45 in Toronto concerned the implementation of new gTLDs and the effects the new processes would have on the rights holders of various trade-marks.
(To those unfamiliar with the Internet Corporation for Assigned Names and Numbers (ICANN), their meeting structure, and the goals of the organization, a fellow IPilogue writer has written a great article covering this.)
This article takes an inquisitive approach to the content of three important sessions that were held during the Toronto ICANN meeting. Below you will find a summary of the important points that were laid down during each of the presentations, the questions that were asked by members of the IP and tech community, and a discussion of the challenges that ICANN will have to resolve before the new gTLD (generic Top Level Domain) program is fully rolled out.
The Trade-mark Clearinghouse (TMCH) has been developed by ICANN as a rights protection mechanism that will be used for gLTD registrations. It has been envisioned as a “one-stop-shop” for trade-mark data and as such will have several important functions, specifically: to perform verification of trade-marks, to maintain a database of this information, and to support rights protection mechanisms of new gTLDs. On June 1st, 2012, ICANN announced that they would be working with Deloitte and IBM (which in turn subcontracted IPClearingHouse) to provide the TMCH services in support of the new gTLDs.
A representative from Deloitte made a presentation concerning the implementation of the TMCH. The following is a quick break-down of the main topics discussed within the presentation:
- To be eligible for registration with the TMCH, one has to be an agent of a mark holder or be the mark holder themselves. However, only the holders of certain marks can register (for example, marks containing a “.” are ineligible to register). Submissions would have to include appropriate proof of use of the mark in order to be eligible.
- The domain name applied for must be identical to the textual elements of the trade-mark. With the exception of “@” and “&” that have been permitted to be spelled out in text, other special characters need to be omitted or replaced with a hyphen.
- In aiding the dispute resolution process, the TMCH will provide notices to registrants and mark holders when discrepancies in applications arise. There are 3 ways in which disputes can arise: 1. The applicant does not agree with the verification; 2. A 3rd party does not agree with the verification; or 3. A 3rd party has become aware of new info that will impact a valid trade-mark record.
- Lastly covered in the presentation was a demonstration of the working TMCH website.
However, an important objective of ICANN is to generate community discussion and incorporate suggestions from the different groups involved in the process. The most important issues that came up during this period were: 1) What stops a fraudulent registration from occurring? 2) How can a trade-mark agent register on behalf of their clients and provide the mark holders access to while keeping information of other clients secret? and 3) How would 3rd parties even know about registration of certain marks in order to file a dispute?
With respect to the first issue, the panelists stated that the process would not be completely automated and therefore some human element would be involved in fact-checking registrations. However, I would expect the potential number of trade-marks being registered would create a large quantity of work for TMCH verifiers should every case require this human element. The second issue had been previously discussed and ICANN has been trying to implement a technical work-around to this problem. However, the panelists did not, in my opinion, have a good answer to the third issue raised. In summary, they stated that individuals might stumble onto information which they know is incorrect and then file a dispute as a result. Given the number of trade-marks that will be involved in the system and the international nature of the TMCH, I don’t think that this sequence of events would occur very often in practice.
In this session, much of the discussion centered on the ways in which the TMCH would be interacting with other groups during the sunrise and trade-mark claims processes.
In order to register during the sunrise period, ICANN has developed a model where public and private encryption keys are used to verify mark details. The TMCH (the asserter) will provide mark holders with a Signed Mark Data (SMD) file which has been digitally signed with a private key. The SMD is then forwarded to the applicable registry (the verifier) which has a public key. This public key will determine the validity of the digital signature but does not contain any important information (hence, being the “public” key). If the SMD is altered, modified, or signed by the incorrect private key, the public key will show that the info is unverified and action can be taken as necessary. One of the main benefits to this system is that verification of the initial trade-mark data need only be done by the TMCH once. As a result, the process is “decoupled” (there would be little to no reliance on the TMCH by the registries) which is one of the main goals for the process.
One of the attendees described the idea as “lightning in a bottle” and few clear issues with the process were brought up. However, it was suggested that if mark holders wanted to only use one SMD for all registries, those registries would have to determine the standard information needed to be included in the SMD file.
Concerning the trade-mark claims period, the spotlight was on the differences between a centralized and a decentralized model of the TMCH. The current ICANN model is a decentralized approach which has registries being provided with encrypted info, allowing greater decoupling of the entities but potentially putting the information at greater risk. The centralized model has the TMCH retaining all relevant info, making it slightly easier for them to control the flow of this information but increasing reliance of the registries on the TMCH as a result. While there is really no right or wrong answer to this question, different players in the process have different beliefs on how this should be approached. As an example, one panelist mentioned that as a representative of a registry, he would rather have a centralized model where less responsibility is placed on his shoulders. It is important to keep in mind that while mark data is public information as a part of its nature, the aggregate mark information could be viewed as very valuable, putting it at risk of potential data mining.
While it places a greater burden on the TMCH, I think the centralized model seems to be the direction ICANN needs to head towards. This model allows for greater flexibility in the future, providing better opportunities to expand and to alter their approach to registration and mark protection. As noted by one of the panelists at the conclusion of the session, it will be up to each business to decide whether or not to put their marks in the TMCH. By doing so, they will have to understand the risks involved as well as the benefits and evaluate if submitting to the TMCH is the correct decision for the business.
The last session that I will comment on concerned the URS process that ICANN has adopted to cheaply and efficiently resolve clear cut cases of registration abuse (such as cybersquatting). The National Arbitration FORUM, WIPO, and Brad Bertoglio (a legal process outsourcing expert) made presentations with respect to the URS process that was proposed to ICANN in the summer of 2009. While there was some disagreement between the presenters as to whether the pricing goals for this process could be met, all of them commented that there was still work needed to be done to flesh out the policy documents. It was also noted by WIPO and Mr. Bertoglio that we would have to automate the process as much as possible to arrive close to the suggested price point. WIPO presented a model (second “Presentations” link on page) that would require supplemental fees in the case of contested disputes. This model could serve as an option to efficient and cheap resolution while still allowing for more complex matters to be determined appropriately.
ICANN has opened the floor to community discussion on many of these topics on their website. It will be necessary for them to receive this feedback in order to consider all facets of implementation and the implications their actions will have on the players of the industry. Even though there has been a lot of progress with respect to the development of the Trade-mark Clearinghouse and the new gTLD system, ICANN and its partners still have a lot of work ahead of them if they want the launch of these initiatives to be as smooth as possible.
Adam Del Gobbo is a JD Candidate at Osgoode Hall Law School.