traverselegal - July 22, 2014 - Cybersquatting Law
The first question which Matt pulled up, we’ve got a number of people asking about, is on this the subjective of how trademarks are going to be handled. There’s actually something as described in the white paper that all of you, in existence, received in advance called the Trademark Clearinghouse that’s run by ICANN. So we’ve been asked to talk a little bit more about the Trademark Clearinghouse and what is the trademark protection process? How will this actually play out? How do I know if somebody is trying to assert a string that I consider my own? Who’s got it?
I will take a crack at this one. (Inaudible). The first thing of intellectual property is and trademarks issues is … first we have you applying for your trademark or string, and second is about protection at the second level. Okay. So let’s start with the first one. So you’re … you’re thinking about applying for … you don’t mind me using Deloitte? … let’s say you’re applying for Deloitte and you say upon the application here’s my trademarks in various parts of the world for Deloitte and that’s putting forward your trademark protection and, I think, that makes an increase moving forward. You apply for Deloitte and I apply for Deloitte, and you plead trademark protection and I don’t, then there’s a dispute process for which very quickly find your (inaudible). You apply for Deloitte and I apply for Deloitte and I run a series of restaurant chains called Deloitte and you run a broad-based business services and accounting practices, then there is a process for similar to a dispute resolution process. It’s similar to the Uniform Dispute Resolution Processes. It is different.
It is a dispute resolution process WIPO will be involved and will run it to my understanding. So it does not go straight to a bidding war? No, it will go for an evaluation. If we both end up being equally trademark, you know, right … intellectual property rights to those names then we may well get called into a process in having to go to an auction. I have completed an auction process. The auction process is actually design for there not to be any auctions. Okay. (laughter)
How can it designed where there are no auction processes? If you give people two months or more to talk to each other and so there has been some speculation that the auction thing was a mechanism for ICANN to make money for itself and it is the exact opposite. It is to try to find some way … find some way that you actually get this resolved and that the hope is to get the parties themselves will work out some deal. Right. If that doesn’t work out then there is the auction.
Now what about the scenarios … so this a delay and they know they are going down this road, but what about if I am a virgin and I am not sure I am going to do this … I … I … maybe I haven’t made the decision and somebody else, Virgin Islands or, I don’t know, for whatever cause, a business in another industry or something … puts out an application to get dot-virgin, will I know about that? I haven’t … (inaudible) … it will all become public once the string is out and the people can apply for and secondly, this objection process will allow you to come in as an objector and say, “I wish to object on the grounds of my filing of the initial copies can’t be breached and this process I covered before will handle an evaluation with WIPO engagement. There is much more about this inside the guide book.
The second set of issues here is about the Trademark Clearinghouse and that’s a proposal … you are looking at the guide book. It is around pages 304, 305 and the next few in the guide book. They are calling for … to … to put together basically a local registry where trademark holders can come and register their trademarks that they hold and there is sort of a lot of legal detail about what they have to show, which will then be used to join upon by the registers who are required to put in place intellectual property protection mechanisms in each of the registries and then at every application you have to say, “Hey, you have to protect intellectual copyrights” including things such things as sunrise provisions. So if you are offering a generic public domain that’s … well, we will make something up … dot-smile and you’re wanting smile to be, you know, you’re wanting that to be sold to lots of people and the Trademark Clearinghouse is the one place that people who hold trademarks can once … once … get the details of their trademark and then all of the registries are required to go to the Clearinghouse to look at the details of that … like the cost of that trademark and I have to inform every registry … and this is just informed once. Right.
So this means that if you registered dot-smile (inaudible) and I come to you and say ‘Hi, I would like to register Deloitte.smile” that this Trademark Clearinghouse is where Deloitte … the place where, you know, the place that planted their flag (inaudible) by the way this is our trademarks and so you would know that I … that would be one setting and that’s a problem I see basis whereby there is a resolution process protection to extend your application. Also … if … if you say … it is put there in trademark clearinghouse and then there is a sunrise provision and I apply for … in the sunrise period … the trademark auction and I come up and say, “I want Deloitte!” Well, the registrant is going to say “Hey, your details are not the same as in the Clearinghouse and we can’t give it to you.”
Clearinghouse is a pretty significant advancement from the historical, you know, there have been a number of new TLD launches. Sixteen launches since 2001 and they all have different characteristics and one of the issues that the trademark community or the IP community came I to ICANN with is … Look! If you’re going to have hundred, maybe a thousand, maybe more, new TLDs coming out, this is going to be an enormous burden to us because historically you have to register all your names. Your whole portfolio of your names, all your brands and so forth, and each TLD as it came out, and that not only create a lot of work for people but it also created a lot of expense because you’ve got to maintain that portfolio over time. So imagine if a brand has, say 270 TLDs on the Internet today, say a big brand has 250 of those and they have a portfolio of ten names, that’s quite a bit of names already to maintain and if multiply that by a factor of 10, its going to be way more. So ICANN working with the IP community devises clearinghouse thing where brand owners can register the name in the Clearinghouse one-time and then each registry operator, whether it be 50 or 100 or 2000 of them, has to then check with the Clearinghouse each time a registration comes in to see if it matches anything in the Clearinghouse and if it does, then a message needs to go to the appropriate owner, the one who has registered and is imbedded in the Clearinghouse, to let them know that there is a potential infringement happening. So it is a much simpler process. It’s a much less expensive process and, in addition to that, ICANN has a whole host of other protections for IP. There’s a rapid … rapid dispute service that that allows you to take names down that are infringing pretty quickly. They have really spent a lot of time with the IP community building what is a much better process than has been happening in the past. I don’t think anybody is fully satisfy with it. I don’t think anybody thinks it’s perfect but it’s dramatically better than what happened in the past and is a significant step forward.