A New Bombshell From ICANN: All Rights Protection Mechanisms (“RPMs”) For All gTLDs Under Review

October 12, 2015

By Clark W. Lackert, Reed Smith LLP

As the Dublin meeting of ICANN approaches, the two major topics of discussion were to be Accountability (reforming ICANN accountability mechanisms) and IANA Transition (how the technical functions of ICANN are to be handled post-US government supervision). However, a significant report on the Rights Protection Mechanisms (RPMs) was just issued which may change the domain name landscape for advertisers and brand owners significantly. Essentially, all RPMs for all Generic Top Level Domains (gTLDs), including old ones such as “.com”, will be reviewed. This includes the Uniform Dispute Resolution Policy (UDRP) established in 1999. This report will be discussed in Dublin, with the public comment period to close on November 30, 2015.

Since the dawn of ICANN, the UDRP has been the one major RPM protecting brand owners against domain name cybersquatting. With the advent of the new gTLDs from the New gTLD Round in 2012, other RPMs were instituted, such as the Uniform Rapid Suspension (URS), the Trademark Clearing House (TMCH) and related sunrise periods and notification procedures, and the Post Delegation Dispute Resolution Procedure (PDDRP). These RPMs provided various avenues available to brand owners to protect their trademarks from being pirated in domain names registered by third parties. Now, as if enough were not on the plate of ICANN as it addresses various community and governmental concerns, the RPMs, which are at the heart of brand protection, are being examined de novo. If a new Policy Development Process (PDP) is commenced, all the RPMs for the new gTLDs as well as the old ones such as “.com” will be on the table. If changes are made, which is very possible, the effects on brand owners could be far-reaching.

What can advertisers and brand owners do, apart from traveling to Dublin this week, to voice their concerns? Before the deadline of November 30, this ICANN report and the related reports mentioned by ICANN should be studied and comments prepared and filed. It is imperative that the private sector be heard in this important discussion about the future of brand protection at ICANN. The landscape on this issue will surely change after a week of ICANN discussions, and we will provide an update after the meeting.

Reed Smith LLP is the ANA’s General Counsel.

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