Comments of Wrays Lawyers on Final IRT Report

["Jim Davies" <Jim.Davies@xxxxxxxxxxxx>]

Wrays is a leading firm of trademark and patent attorneys in Perth,
Western Australia.  We act for a wide range of clients, from individuals
to large corporations.  We welcome the opportunity to comment on the
Final Report of the Implementation Recommendation Team ("IRT") and
acknowledge the amount of work that they undertook.  However, we would
caveat our response by stating that we are concerned that the proposed
new TLDs will generate an additional IP protection cost requirement for
our clients, in return for questionable wider benefit.  That said,
assuming that the new extensions are going to be introduced, we would
comment as follows:

 

Due Process - It seems to us that that the process for producing this
IRT report falls short of being ideal - having been done very quickly;
and rightly or wrongly giving the impression of being controlled by IP
rights holder community.  This is not a criticism of those who undertook
this very difficult task in the timeframe allowed; but we would ask the
question why did it need to be done so quickly and would re-iterate out
initial question about the need for/problems caused by these proposed
new domain extensions.

 

IP Clearinghouse - The idea of a rights holder only needing to make one
application for validation of priority rights is a good one and we
strongly support it.  

 

Global Protected Marks ("GPM") - We are concerned that the GPM list
proposes creating a de novo type of "super" TM right, for no immediately
obvious good reason.  This suggests that ICANN should take on a highly
controversial role that seems to be beyond what one would understand to
be within its current jurisdiction.  It seems to us that this is a
needlessly confusing and problematic idea, especially bearing in mind
that it is said that there will only be a small number of these GPM
marks.  It seems that "normal" TM holders could be put at an unfair
disadvantage; while cybersquatters will doubtless find ways to work
around it anyway.  We respectfully suggest that if such a controversial
proposal is to be tabled, it need not form part of any new regime linked
to the new TLDs, but rather be proposed through the usual ICANN
procedures.

 

Uniform Rapid Suspension ("the URS")   - We see this proposal as
offering a "quick" UDRP, which was itself originally intended as a quick
mechanism for dealing with blatant cybersquatting.  Whilst we understand
the motivation for such a proposal, we also appreciate why it is causing
significant alarm in the wider ICANN community.  We think that (as with
the GPML) this proposal should be divorced from the new TLD process and
should be advanced separately under ICANN's bylaws.  That way, it will
not slow down the less controversial proposals, such as the IP
Clearinghouse.  It can then be looked at properly and we suggest that it
form part of a full review of the UDRP.

 

WHOIS - Whilst we are sympathetic to the proposed "fat" WHOIS, we also
see the need for legitimate counterbalancing with the data protection
concerns that it raises.  Again, we propose that it should be dealt with
in a less urgent forum and in a wider context.

 

Post Delegation Dispute Process - We support the type of post delegation
dispute process outlined for top level disputes, subject to confirmation
of all the details.

 

String Comparison Algorithm - We support the proposed expansion of the
test for string recognition in the initial delegation review.

 

In summary, we express concern about the increased IP management
overheads that the proposed new TLDs will create.  We welcome those
parts of the IRT Report that we feel are not particularly controversial,
such as the IP Clearinghouse and Post Delegation Dispute Process.  We
are of the view that the more difficult proposals, in particular the
GPML and URS, should not be rushed through, merely to keep with the
timetable required for the new TLDs.  Rather than risk linking the more
controversial parts to the overall package, we suggest dealing with
these more problematic issues separately from the TLD implementation, by
way of following more generally followed ICANN procedures.  

 

 

Jim Davies | IP Consultant  
Phone: 9216 5100   Fax: 9216 5199 

  <http://www.wrays.com.au/> 
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