The IRT Proposals of a Globally Protected Marks List (GPML): Dangers/Problems And Innovative Solutions

Paper shared on August 7, 2009

Introduction

We spent a long time trying to understand what the IRT wants in the GPML. So, let’s start with how the IRT envisions the GPML – “the IRT recommends the creation of a Globally Protected Marks List to provide protection to Globally Protected Marks at the top and second levels”. [IRT report, p.16)

What the IRT specifically proposes:

Trademark owners that wish to have a mark included on the GPML must provide to the Clearinghouse documented evidence that is capable of being verified of the criteria listed below. After the initial gTLD application round, these criteria should be evaluated and, if appropriate, revised.

The IRT no longer provides the ICANN community with any specific recommended criteria about registration numbers in the various regions, and appears to be at odds within the Committee as to the answers.

Further, all trademark registrations must have issued on or before the date that GPML applications are first accepted and must be based on trademark registration applications filed on or before 1 November, 2008, and the second level domain name for the GPM’s principal online presence must be identical to the GPM. [IRT Recommendation, pp. 16‐7]

Dangers/Problems with the GPML Proposal:

1. Globally Protected Marks (“GPM”): The IRT report seeks to create an alternative, new category of trademarks that do not fall within the famous/well-known category.

2. GPMs will not necessarily involve famous marks, and may not even include famous brands – however, the IRT’s GPMs could include very esoteric scientific and technical terms that are currently used worldwide.

3. Thus, these new GPML marks will be even broader in their numbers and have protection far beyond that of today's well-known brand names.

4. The new GPML marks will have a ‘supernova’ status, and for the discussion below, we call them 'supernova trademarks.'

5. The protection of these supernova marks will be excessive within ICANN.

6. The scope of protection of these supernova marks outside of ICANN is unknown, and potentially quite dangerous.

Note: as an academic specializing in the UDRP and studying its untended consequences outside of ICANN, Dr. Komaitis shares his expert opinion:

"Unfortunately, we cannot tell you much about the scope of protection for ‘supernova’ trademarks, how courts view them, how academics understand them – they don’t exist. Even in the case of famous/well‐known marks, which welcome an additional layer of protection compared to ones not classed as famous, the fame of the mark does not grant its owner immunity against any other use. The GPML will grant this sort of immunity – it will allow owners of marks to exclude words and monopolize the domain name vocabulary.

"The IRT has touched upon (and is asking ICANN to canonize) an issue, which is more controversial than the completely baffling, unchartered and confusing path of famous marks. In the US, as in most parts of the world, one cannot tell it is a famous mark unless the court says so. At an international level there is no single list, no consensus and no agreement on that very issue."

In brief:

· The GPML will exorcise certain words from the DNS as it promotes protection of strings of characters, rather than protection of the mark and its association with goods or services;

· The GPML will create an alternative, new category of trademarks that do not fall within the famous/well-known category;

· The GPML will include very esoteric scientific and technical terms that are currently used worldwide

· The GPML will create ‘supernova’ marks.

· The GPML will create scope of protection of the supernova marks beyond that of even what globally famous brands should enjoy within ICANN;

· The GPML overrides the fundamental legal principle that only courts can determine whether a mark qualifies as “famous”;

· The GPML will help a trademark owners elevate the status of their trademarks to the protection of "text strings," not trademarks -- truly unprecedented levels;

· The GPML will not further consumer protection;

· And the GPML will violate a fundamental norm of Free Speech and Freedom of Expression -- the prohibition on its ‘prior restraint’

Additional Dangers/ Problems for ICANN of Overseeing a GPML

· Harassment - trademark owners will lobby ICANN incessantly for the GPML bars to be set to a point where their company's trademark qualify

· Liability - trademark owners not listed in the GPML may sue ICANN for inclusion for and seek damages for the costs of not being included with the special privileges (envisioned and unforeseen) that the GPML will deliver

· Defend ICANN from potential lawsuits from trademark owners losing their domain name due to GPML hijacking (abuse of a granted GPML listing)

· Defend ICANN from potential lawsuits from free speech advocates

· Process appeals related to the GPML;

· Administravia – e.g. processing addition/deletion from the GPML at regular intervals, including performing assessments for GPML listing candidates.

Conclusion

The issue of globally famous marks is one which has wracked the brains of those who created ICANN, those who worked within ICANN since its inception, and today. When faced with the question of famous marks, the White Paper turned to WIPO.

When faced with the question of famous marks protection in the gTLDs, Working Group B of the DNSO also turned to WIPO -- requesting a list from which to base its findings.

All have turned outside of ICANN -- for its not within the technical scope and mission to create such a list. ICANN must wait until the global community has created standards, and a list, of globally famous marks.

We join NCUC, ALAC, eNom, and many others, even within the IRT, who say that the GPML is clearly a proposal of the IRT that cannot go forward and cannot be fixed.

We hope to make you see that implementation of such a proposal could backfire and fragment the registration of domain names. The degree of protection that trademark owners seek through the GPML does not exist in the offline world.

Kathryn Kleiman, Esq.

Trademark Law Attorney, UDRP Drafter

Dr. Konstantinos Komaitis,

Law Professor,

The Law School,

University of Strathclyde, Galsgow, UK