Experian Limited Comments in Support of Rights Protection Mechanisms in the new gTLDs

["Mills, Andrew" <Andrew.Mills@xxxxxxxxxxxxxxx>]

Dear Sirs,
 
Experian is concerned that the expansion of the domain name system
through the new gTLD launch will promote trade mark infringement and
therefore consumer confusion and harm on a massive scale unless adequate
rights protection mechanisms are put in place.  Experian commends the
ICANN Board for creating the Implementation Recommendation Team.
Experian broadly supports the recommendations of the IRT.

Whilst Experian does not support the new gTLD programme unreservedly, it
does believe that measures such as the IP Clearinghouse which will
reduce the cost of validating trade marks significantly during Sunrise
programmes and the URS (Uniform Rapid Suspension System) which will
enable rights owners to tackle the most blatant incidents of
infringement, are very valuable.

As there have been questions over the practicality of such measures,
Experian asks the ICANN Board and staff to consider that most of the
recommendations of the IRT appear to be based upon proven services. For
example, Nominet UK has been operating a fast-track challenge process
similar to the URS for several years with great success I understand. I
do not believe that small, non-commercial users have been disadvantaged
by the process. This will certainly be the case with the URS which
requires an independent panelist to determine if the domain name has
been used in an infringing fashion.
 

Experian urges ICANN to ask the IRT to recommend measures to standardise
the practice of allowing proxy organisations to maintain domain name
registrations behind a "privacy curtain". Whilst there can be legitimate
reasons for this practice, services that mask accurate registrant data
are used repeatedly by domain infringers and inhibit trade mark
professionals and law enforcement agencies alike.

 
Experian would also like to take the opportunity to encourage ICANN to
adopt a more up-to-date approach to bad faith in the context of
cybersquatting. ICANN should, in our view, introduce the same provisions
adopted by the EU in relation to eu. domain names in which the double
requirements (i.e. lack of legitimate interest + bad faith) should give
way to the double "or" requirement: that is, it would be sufficient for
the complainant to prove bad faith or to give a principle of proof of
lack of legitimate interest; and if the respondent does not provide any
evidence on its legitimate interest, this would be sufficient for the
complainant to win the case. 
 
Yours faithfully,

Andrew Mills 
Head of Intellectual Property & Litigation
Solicitor & European Trademark Attorney 
Experian | Landmark House | Experian Way | Nottingham | NG80 1ZZ |
United Kingdom | 
T: +44 (0) 115 828 6425 | M: +44 (0) 7854 116 179 | F: +44(0)115 828
6342 | andrew.mills@xxxxxxxxxxxxxxx 

 

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