Recent ICANN Developments Continue to Raise Issues in the New Year

January 23, 2015

By Clark W. Lackert, Reed Smith LLP

Just as ICANN plans for the dual challenges of IANA Transition and Accountability in 2015, we should not forget that we are still in the midst of Round 1 implementation, and its aftermath. How implementation is proceeding is critical to brand owners and advertisers who are tasked with protecting their intellectual property on the internet.

A good example of how Round 1 is actually being implemented is the now infamous press release last month concerning the removal of domain names from a collision list for the “.xyz” registry. Last December, XYZ issued a press release advising that “…almost 20,000 names will be available for the first time” and that “amongst these new names are thousands of short, marketable keyword domain names including rare three letter and three number .xyz domains, as well as trademarked names such as Nike, Hulu, Netflix, Skype, Pepsi, Audi, and Deloitte”. Many in the trademark and domain name communities immediately viewed this as an announcement which could be misunderstood by the public and domainers as making these trademarks available to the public as domain names, inviting blatant cybersquatting. Of course, protected trademarks are not “available” to any and all comers, but rather should be registered only by the proper brand owners. Although the registry does not take responsibility for policing these new registrations, brand owners and advertisers need to be constantly on guard. After the public outcry, this press release was withdrawn. This example illustrates the importance of policing of brands in the new gTLD registries, which now number over 400. Best practices dictate at least a minimal surveillance program for major brands in the domain name space, with prioritized enforcement action needed, including online arbitration actions where appropriate. Most brand owners take action against major infringements in major markets for major brands, but not necessarily against every possible infringement. Each individual and company crafts a tailored policing program to suit specialized needs and budgets. This .xyz rollout is just one example of the issues arising from the complex ICANN rules on new gTLD management mechanisms.

Looking forward to Round 2, ANA took the lead in filing detailed objections before the December 31, 2014 deadline to the new GAC proposal to extend GAC’s power to object to virtually any type of new domain name which may have some geographical significance. Many other organizations echoed ANA’s strong stance and the overall comments which were filed with ICANN were almost universally negative. If the GAC was indeed floating a “trial balloon” as to whether it could expand its powers in this direction, the answer was a very clear “no” from the multi-stakeholder internet community. There may well be a “Version 2.0” of this proposal, but we will need to wait and see.

Finally, preparations are now in their final stages for ICANN 52 starting in early February in Singapore, which has a full agenda of controversial topics, many of which having no clear consensus on a way forward. There may be some answers and a lot more questions on the direction ICANN is taking once the Singapore meeting commences.

Reed Smith LLP is the ANA’s General Counsel.

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