Preventive mechanisms -- response to Krimm response to Chua

["Metalitz, Steven" <met@xxxxxxx>]

Cyril Chua's comment
(http://forum.icann.org/lists/gtldfinalreport-2007/msg00048.html) was
directed to the lack of a requirement (in the projected new TLD
proposal) for any rights protection mechanism (e.g., sunrise procedures,
among other alternatives) to prevent conflicts with regard to second
level domain registrations within a new TLD.   Dan Krimm's response
(http://forum.icann.org/lists/gtldfinalreport-2007/msg00050.html)  was
directed mainly to the separate issue of possible collisions between new
TLD strings (at the first level) and trademarks.  That issue is already
dealt with in the draft final report, as a subject for possible dispute
resolution, but the issue Cyril raises is not. 

        Dan suggests that it is inappropriate to ask ICANN to "establish
any globally-based RPM for trademarks.  Perhaps this ought to be
referred
to WIPO instead."  I don't believe Cyril was asking for ICANN to
establish a mechanism (indeed, he notes that "there is no universal
rights protection
mechanism (RPM))," but rather that it require applicants for new TLDs to
state what mechanism they will use to prevent collisions between second
level domain registrations and trademarks.  As it stands now, a new gTLD
could be recognized in which no such mechanism of any kind is provided.
This is an invitation to further disputes that might be effectively
prevented were such a mechanism in place.   

        Finally, the World Intellectual Property Organization (WIPO), as
the recognized expert international body, has already weighed in on the
issue of preventive mechanisms to be used in new Top Level Domains.  See
http://www.wipo.int/amc/en/domains/reports/newgtld-ip/index.html#1,
which discusses the circumstances in which preventive mechanisms are
most likely to be needed in new TLDs, analyzes the mechanisms that have
been employed in previous start-up situations involving new TLDs, and
outlines the characteristics of a possible uniform preventive IP
protection mechanism for new TLDs.  

        I agree with Cyril that the lack of any requirement for the new
TLD registry operator to provide for such a preventive mechanism is a
significant gap in an otherwise comprehensive and thoughtful final
report.    

Steve Metalitz