Trademark Clearing House and the Established Use of DotCom Registrants

[Paul Foody <paulfoody@xxxxxxxxx>]

Dear Sirs

It was a pleasure to have the opportunity to speak in Nairobi and I  
thankyou now for the opportunity to offer my opinion on the Trademark  
Protection Mechanisms proposed for the latest applicant guidebook.
According to WIPO, which, as I understand it, whilst being one of the  
chief architects of the new gTLD proposals, will also be one of its  
major beneficiaries should new gTLDs go ahead, “Intellectual property  
(IP) refers to creations of the mind: inventions, literary and  
artistic works, and symbols, names, images, and designs used in  
commerce”.  A trademark, as described by WIPO, is “a distinctive sign  
which identifies certain goods or services as those produced or  
provided by a specific person or enterprise” originating from “ancient  
times, when craftsmen reproduced their signatures, or "marks" on their  
artistic or utilitarian products” whilst adding that “the system  
enables people with skill and enterprise to produce and market goods  
and services in the fairest possible conditions, thereby facilitating  
international trade”.
The emphasis WIPO puts on trademarks as a means of promoting  
initiative, skill and enterprise is to be applauded.  However the  
current Trademark protections being proposed for inclusion within the  
Draft Application Guidebook are far from fair.  In effect, by ignoring  
DotCom “Creations of the Mind” it will, in my opinion, render the  
existing domain registration system as nothing more than one huge  
domain tasting exercise for the benefit of internet savvy corporations  
especially search engine operators, registrars, IP lawyers and the  
corporations they represent and others fortunate enough to have been  
sufficiently aware of ICANN’s new gTLD plans to have been able to  
prepare for the upcoming replacement of the DotCom registry, which  
ICANN has been planning since its formation in 1998.  In short ICANN  
insiders.
The new gTLDs, as proposed, will inevitably completely replace the  
DotCom registry, which became the de facto standard for registering an  
online presence and all but rendered trademark registration obsolete  
(even after Trademark Laws belatedly introduced classifications for  
internet businesses).  Whilst the proposed TM protections within the  
DAG will restore the role of the trademark lawyer, albeit, probably,  
only temporarily, this will be at the expense of Dotcom registrants  
whose initiative, enterprise and advertising budgets have done so much  
to drive the success of the internet as a commercial medium.  That  
this appears to be a deliberate and planned attack on the DotCom  
registry and its registrants is best illustrated by the specific  
exclusion within the TM proposals of any trademark including DotCom,  
an exclusion none of the IRT panel in Nairobi could justify.
ICANN’s continued refusal to notify the 85 million DotCom registrants  
(not to mention over 100 million registrants of other registries) of  
the new gTLD proposals until the Communications campaign due to  
commence after resolution of the outstanding overarching problems,  
including the TM issue, suggests ICANN is not willing to entertain  
opinions which might conflict with their own, regardless of validity.   
This dismissive attitude towards Registrants is further illustrated by  
the Registrants Rights Charter, which although introduced in a  
resolution in Mexico in March 2009, simultaneously with the IRT and  
with a 31 day timeframe was not completed until early this year and  
even then included no provision that Registrants be notified of  
proposed changes which might materially affect their domain name assets.
The TM proposals also seek to regulate the allocation of gTLD strings  
which whilst frequently registered as DotCom (and other) domains  
cannot be registered in (so far as I am aware) existing TM systems,  
such as descriptive or indistinct marks and as such is evidence, in my  
opinion, that the IRT/STI is overstepping its powers and given the  
impact such changes will have on demand for national trademarks and  
the operation of national IP Offices, suggests a need for  
consideration of the entire new gTLD program by senior levels of all  
governments.
Accordingly, rather than legitimising the allocation of new gTLD  
strings, the proposed trademark provisions demonstrate the potential  
advantage to unscrupulous "insiders” involved in the formation of  
ICANN’s new gTLD policy, as well as those simply aware of the process,  
who, for years already, have enjoyed privileged information which may  
have enabled them, accidentally or otherwise, to obtain for themselves  
and their associates a material advantage over the general public they  
exist to serve, such as the registration of trademarks in preparation  
for the upcoming gTLD land-grab.
Given the potentially enormous financial value of such insider  
knowledge and the ever growing gulf between our system of laws,  
intellectual and otherwise and the justice it purports to support, if  
the initiative and enterprise demonstrated by 85 million DotCom  
registrants, electronically documented, is not given even the  
protection provided by hand crafted trademarks of “ancient times”, the  
new gTLD introduction, backed as it is by ICANN and WIPO, may well  
prove to be the straw that breaks the camels back.
Accordingly, whilst I remain fundamentally opposed to the introduction  
of new gTLDs except where such gTLDs will add to competition, such as  
with limited numbers of categorised gTLDs, in view of recommendations  
by Microsoft’s Russ Pangborn and Richard Tindal that ICANN should  
recognise all national trademarks regardless of validation of use or  
substantive review, ICANN should similarly recognise the established  
use rights conferred by the meritocratic registration of legitimate  
DotCom domains and require that  applications for new gTLD strings be  
backed either by the ownership of the DotCom domain or the consent of  
the DotCom registrant of the relevant string.
I thankyou again for the opportunity to state my opinion which I know  
will receive your fullest consideration not least because I believe my  
views will be echoed by a large proportion of the 85 million DotCom  
registrants who even now remain largely unaware of the impending  
changes to the domain name system despite the material impact it will  
have on their domain names, many of which are critical to the  
operation of millions of small and medium size businesses throughout  
the world.
Thanks again

Sincerely

Paul Foody