Brand Owners Write To Dept Of Commerce: Want No Cost URS, Loser Pays Model, TM Blocks & More

The United States Brand Owner Summit sent to the United States Department of Commerce asking the Government for new protections in the roll out of the new gTLD’s program.

The letter which is called “NEW gTLD RECOMMENDATIONS TO STRENGTHEN SECOND-LEVEL RIGHTS PROTECTION MECHANISMS” was sent to Lawrence E. Strickling the Assistant Secretary for Communications & Information National Telecommunications & Information Administration United States Department of Commerce last week.

“”The undersigned United States industry groups write to you to request your consideration of and support for additional trademark protections at the second level of all new gTLDs.”

We are pleased to propose for your consideration and support the following recommendations:

Trademark Clearinghouse

• The Trademark Claims Service must:

Be broader than merely identical match to include at least, domain names that

(a) contain (not merely consist of)a mark in the Trademark Clearinghouse; and

(b) consist of the mark and a generic term from the description of goods and services in the registration deposited with the Trademark Clearinghouse; and

Last longer than sixty days

Sunrise periods should include the option for brand owners to “block” in perpetuity second- level names that match their trademarks, for as long as the owner, or a successor-in-interest, retains rights in the trademark, similar to the ICM Registry launch of the .XXX sTLD.

Uniform Rapid Suspension System (“URS”)

• Procedure:

The Trademark Clearinghouse should automatically tie into the URS with an easy-to- use interface so that brand owners need only validate their marks once, thus making URS complaints simpler and less costly and the URS process faster; and

Default judgments must not warrant panel appointments.

• Fees:

The loser of a contested URS proceeding must bear the URS filing and adjudication fees

Additional information from ICANN staff and potential URS service providers during the Prague meeting demonstrated that the provider infrastructure needed to support a loser-pays URS model is one factor that may drive implementation costs of the URS upward. Accordingly, this recommendation may require further consideration and development.

If the Respondent (registrant) does not respond, the brand owner should pay only an administrative fee and not the fee required in a contested proceeding where a panel is appointed; and

The URS must operate on a low- or no-cost basis, which ICANN should subsidize if necessary.Recidivist bad actors should be tracked via a list of common Respondents and that list should be published and publicly available.

The undersigned United States industry groups jointly signing this letter recognize and acknowledge the many other industry group members and private practitioners who collectively contributed to and endorse these recommendations.

We sincerely appreciate your attention to these recommendations to ensure and improve brand owner protections in connection with ICANN’s new generic top-level domain program. From a concerted U.S. brand owner perspective, although these recommendations are a minimum and many brand owners believe that more work needs to be done, we believe they are the most important and implementable additions to rights protection mechanisms at the second level. We welcome the opportunity to discuss with you any questions or concerns you may have about these proposals.”

The letter was signed by:

William G. Barber
American Intellectual Property Law AssociationHerbert C. Wamsley
Executive Director
Intellectual Property Owners Association

Josh Bourne
Coalition Against Domain Name Abuse

Alan C. Drewsen
Executive Director
International Trademark Association

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