ICANN Rejects Reconsideration Request Regarding “Strawman”

Some good news from ICANN regarding the status of trademark protections.  Recently, the GNSO Noncommercial User Stakeholders Group (NCSG) filed a reconsideration request with ICANN regarding the staff determination that the protections the “Strawman” proposal provides to previously abused names in the Trademark Clearinghouse were “a reasonable add-on to an existing service, rather than a proposed new service.” This finding allowed the Strawman proposal to be determined an implementation matter rather than a new policy determination which would have required going through an additional ICANN consensus process.

The NCSG request asked ICANN to reconsider its determination, arguing that the staff’s decision to allow previously abused names to be added to verified trademark records in the Trademark Clearinghouse was “staff-directed policy” and not part of the implementation of the Strawman proposal.  It also claimed that ICANN ignored GNSO’s input (which contended it was a policy matter) and that noncommercial users would be harmed by these names being protected in the Trademark Clearinghouse.

However, ICANN concluded on review that the matter is one of implementation of existing policy, not creation of any new policy, stating, “the staff action to allow trademark holders to include, along with a Clearinghouse record of a verified trademark, up to 50 names that had previously been found to have been abusively registered or used, is implementation of the established ICANN policy found in Recommendation 3 [of the GNSO’s recommendations on the introduction of new gTLDs], as are the other rights protections mechanisms within the New gTLD Program.”

This is an important development.  It allows ICANN to reinforce the rights protection mechanisms in the new TLD program.  The decision still could be reviewed by the ICANN ombudsman, but it is a positive sign that ICANN is taking seriously the concerns expressed by ANA and other groups that the trademark protections must be more fully developed before any new TLDs are deposited into the root.