Is ICANN Cooking Up a Storm?

While it would be difficult to define a single theme of meetings as diverse and sometimes as contentious as the recent ICANN consultation sessions in July in New York and London, the most broadly based concern was clear.

Rights holders, whether they own trademarks and brand names, or whether they own other intellectual property on the Internet, are worried that the new top-level domains proposed by ICANN will create an opportunity to cause even more problems than we have already with the current system.

The top-level domain discussions center on a proposal by ICANN, the group that oversees the Internet, to expand the number of top-level domains that can be used, and if they're expanded, what type of names should be allowed.

More Opportunities for Abuse

A top-level domain is the part of an Internet address that appears to the right of the dot. For example, if you see yourcompany.com the "com" part is the top-level domain. ICANN is proposing that this part of the Internet address be able to include almost anything, including a company name or trademark.

The marketing benefits are obvious. If you run a company called "Joe's Company," you could get ".joe" as a top-level domain. However, the risks are significant.

Cybersquatting, the most prevalent form of brand abuse that we find in the dot-com world, could extend into the world of new top-level domains. Shady operators could find new ground to take advantage of strong brands to divert traffic and conduct other search engine marketing abuses.

Consensus Elusive

Companies both large and small agreed on two items at the New York and London meetings: 1) ICANN needs to create protections for brands and trademarks in the new top-level domain namespace; and 2) ICANN needs to create a dispute resolution process that's both fair and fast. Unfortunately, there was little agreement on how that protection should happen or how the dispute resolution process should be implemented.

One idea that came under discussion was to establish a global protected marks list, or database of brand names, as a way to protect trademarks that are already registered worldwide. Other ideas addressed a means to determine who would keep track of the top-level domains and how the process should be enforced and managed.

What became clear during the discussions was that a method must be found to protect the brands of even the smallest brand holders. This means that the process must be accessible to companies of all sizes, while also protecting companies and their brands against frivolous challenges and the threat of cybersquatting.

Prepare to Respond

Examining the current extent of brand abuse highlights the importance of these issues. For example, one speaker mentioned that the brand "Tamiflu" is being widely misused in domain names under the current procedures, creating a host of legal issues for the owner of the brand, Roche.

In terms of next steps, ICANN announced that a draft of its rights protection mechanism will appear in the next version of the Draft Applicant Guidebook, which will be released before the planned ICANN meeting in Seoul, South Korea, in late October.

While the exact release date of the Draft Applicant Guidebook is unclear, one thing that is clear is that rights holders need to study it immediately upon release and be prepared to comment. Be prepared to call attention to any oversights, omissions or problems in the ICANN proposals. If necessary, be prepared to take concerns about adherence to existing laws to Congress to make sure that rights are protected.

The comment period that follows the release is the time to act so that protections for rights holders -- large and small -- are baked into the rules from the beginning.