Today’s much anticipated meeting between the ICANN Board and the Government Advisory Counsel was marred by name calling and disagreement.
The meeting scheduled to run from 4pm-6pm didn’t start until 4:45 and ran until well after 7pm local time.
The main topic of the day was once again Trademarks with the GAC wanting to recognize Trademark holders rights based off of the local law under which the trademark was issued, including many EU countries where a trademark can be issued without use.
Other countries issue trademark without any review.
The United States and other countries only issue trademarks based on a finding of use of the mark and a more substantive check.
ICANN on the other hand, quite aware of the gaming of the trademark system that was quite prevalent during the .EU launch wants to limit a “trademark holders” right to obtain a domain during the Sunrise period to only trademarks that are in actual use.
The debate raged on the trademark issue for over an hour with ICANN not moving from their position, which we agree with, that trademarks must be in use to be granted the right to early and exclusive registration during a sunrise period.
Frustrated by his inability to get ICANN to adopt the GAC policy the Representative for European Commission Gerald de Graaf told ICANN Chairman Peter Thrush that the wasn’t sure if “he was talking to the deaf or stupid”.
In general the EC representative dominated the discussion from the GAC side and don’t think he represented his constituents well.
The policy regarding trademarks was laid out by the board:
“One of the points on the scorecard was, why are you treating trademark registrations from different countries differently? Because in the United States, for example, to receive a trademark there must be a substantive review, whereas in countries in Europe, there is no substantive review.
“So the board took a look at the Guidebook and thought the GAC is right, this report seems to differentiate, to say it differently, to treat one country’s trademarks in a superior way to another country’s trademarks.
“And so we, tried to look at and analyze, well, where do we go from here? and we’ve heard a lot about gaming of various sunrise systems. and, remember, the sunrise is a way to give superior rights to trademark owners, that they don’t actually have currently under the law. this is saying that a trademark is going to — by having a registered trademark, you’re going to be able to get a tld before anyone else. ”
“And so one of the ways we thought we could level the playing field and make sure trademark owners were unfairly challenged in the registration is to say everything is on a level playing field here.”
“So, for example, in the United States where you prove use to get a trademark, if you want to put your trademark in the clearinghouse and — so it is and, you can put your trademark in the clearinghouse without demonstrating use, so both U.S., European, South American, Asia, all trademarks will be accepted into the clearinghouse, period.”
“However, if you want to use that trademark in the clearinghouse as a basis for a sunrise registration , it very, very premier right, whether you have had an United States trademark or a Benelux trademark or a South African trademark, you will need to demonstrate use in order to qualify for a sunrise registration. and we thought this was an important requirement that will be applied equally to any registration from any country around the world. we thought this was a level playing field and way to make sure that only legitimate trademark owners that are using marks are qualifying for sunrise registrations.”
It looks like ICANN is ready to move ahead on this issue against GAC advice but we believe its the proper conclusion which balances legitimate trademark holders while protecting domain holders from those trying to get superior rights by gaming the trademark system.
The second major point of discussion today was the registry-registrar cross ownership rules which I would say ICANN recognizes is going to be a problem to which Chairman Thrush said:
“I think if i can begin with the competition concerns, in particular those resulting from changes to the registry/registrar cross-ownership. and the first thing to say is we’ve received not from the GAC but from two other governmental agencies letters concerning competition issues arising from the implementation of the vertical integration rules. and so the first thing is to acknowledge that we have received those and to confirm that we have evaluated those, including internally and with outside counsel. and we take very seriously the advice that’s contained in those.”
“If i can very quickly summarize our response at the stage today. the first is they deal merely with two different issues. one is what we call the leg gas at this TLD, .Com, .Org and those that are under existing contracts and we have a process from transiting from the legacy position where there was vertical separation to the proposed model of vertical integration, we believe that that process largely takes care of many of the concerns that the governmental agencies have raised.”
“We also are very concerned about substantive market power, and we will not allow vertical integration to occur where we have any risk — we believe there is any risk of the abuse of that market power.”
“In relation to the TLD’s the position, of course, is slightly different. and we will work with those competition authorities and others to ensure that the process does not allow new TLD’s to either go — to have vertical integration where, again, there is any risk so we take that message very seriously.”
It seems that ICANN knows they are going to have to change or adjust the proposed vertical integration policy.
The third major discussion of the day was financial assistance for new gTLD applicants from developing countries.
ICANN seemingly threw out a number out of nowhere saying they would put up $2 Million aside to assist these applicants.
However, with fees at $185K per application even if ICANN would half the cost of applications from developing countries they would only have enough money from the $2M to help 20 applicants.
If certain applicants needed more help than just 1/2 the cost of the application the $2M would run out pretty quickly.
I’m not sure where or why ICANN would have just thrown out a number not knowing how many applications from developing countries would be coming in.
The fourth discussion of the day was whether there would be a reserved domains list to protect certain terms like Red Cross and/or Olympics.
Seems like the ICANN board is reluctant to grant certain groups a certain super right of protection and personally not sure they are entitled to it.
I mean why is the Olympics entitled to more protection than the NFL or NASCAR?
Why is the Red Cross entitled to more protection than any other charity like say UNICEF?
Finally the discussion turned towards the Uniform Rapid Suspension (URS) and the standard of evidence that should be used to take down a domain name.
The GAC wanted ICANN to use a lower standard of proof than ICANN provided for in the Guidebook to take a domain away through the URS.
“In the United States, anyway, clear and convincing evidence is also a civil standard, but admittedly higher than preponderance, which to us means 51%.
“With regard to the URS, that was developed for cases where there were clear-cut cases of abuse especially use of the word “clear-cut cases” seem to lend themselves especially well for a very rapid takedown model to require a higher standard than just a preponderance of evidence.”
“The URS is a very dramatic remedy, where a party can go directly after a registry for domain names where there may or may not be a “direct connection,” and therefore the board also agreed among themselves that the standard of clear and convincing, higher than just 51%, was more appropriate.”
Good for ICANN.
URS is an extreme, cheap quick method to take away domain holders rights and is meant for clear cut cases and therefore ICANN is right that a higher standard of proof should be required.
Looks like we are on to Monday’s Board meeting and what I’m still predicting will be the passage of the new gTLD program and a time table for applications to be taken.
We will be there to report it all.