FW: INTA Call to Action: Enhancing Trademark Protections in New gTLDs

["Mussell, Paul" <Paul.Mussell@xxxxxxxxxxx>]

NCS Pearson supports the adoption of the "Strawman Solution" & the
Limited Preventative Registration proposals as necessary implementation
measures for protecting Internet users and third-party intellectual
property rights.

 

Paul

 

Paul W. Mussell
Vice President & Assistant General Counsel

NCS Pearson Legal Department 


5601 Green Valley Drive 

Bloomington, MN 55437 

USA

T: (952) 681-3058
F: (952) 905-7480

E: paul.mussell@xxxxxxxxxxx <mailto:paul.mussell@xxxxxxxxxxx>  


Pearson 

Always Learning
Learn more at www.pearson.com <http://www.pearson.com/> 

 

 

________________________________

From: Claudio Di Gangi [mailto:cdigangi@xxxxxxxx] 
Sent: Friday, December 21, 2012 6:25 PM
To: Claudio Di Gangi
Subject: INTA Call to Action: Enhancing Trademark Protections in New
gTLDs

Subject:  INTA Call to Action:  Trademark Protection and New gTLDs

 

Dear INTA Member,

 

INTA urges you to respond by Tuesday, January 15, 2013, to a request for
comments
<http://www.icann.org/en/news/public-comment/tmch-strawman-30nov12-en.ht
m>  from the Internet Corporation for Assigned Names and Numbers (ICANN)
regarding proposals to enhance trademark protection under ICANN's
planned exponential expansion of the Internet's Domain Name System (DNS)
in 2013.  

 

What's The Issue?: With nearly 2,000 applications for new generic
Top-Level Domains (gTLDs) being considered for approval, trademark
owners face enormous costs and resource burdens to protect their
trademarks from misappropriation, infringement, and other online
threats. 

 

The impact of new gTLDs will vary depending on the nature of the
Top-Level Domain, its operating rules, and ICANN's ability to enforce
the associated-Registry and Registrar contracts.  Some of the
applied-for new gTLDs, such as .COMMUNITY or .BRAND, may not impose
negative social costs and as a result, may potentially improve societal
welfare in certain respects.

 

However, with many hundreds of new gTLDs not intending to impose any
eligibility restrictions -- allowing anyone to register domain names on
a "first come, first serve" basis - the potential for harm, including
consumer confusion, is extremely high.

 

Therefore, for many of the applied-for new gTLDs: the overall net impact
to society may be negative - and further protections are necessary to
protect Internet users and intellectual property owners from harm.

 

In order to enforce your trademark rights and protect consumers from
confusion in the Internet marketplace, you will likely need to register
more domain names corresponding to your trademarks, increase monitoring
for infringement, and bring costly enforcement actions. Given ICANN's
determination to move forward, the available domain space on the
Internet could easily increase from the current 22 gTLDs to over a 1000
new gTLDs. 

 

So What Is The Request For Comments About?  After major concerns were
voiced by INTA and others, ICANN, under the direction of its new CEO,
agreed to consider two independent proposals for enhancing trademark
protection during the launch of the new gTLDs:

 

*         a proposal that focuses on improving several aspects of the
existing "Trademark Claims" service, which is called the "Strawman
Solution"; and

 

*         a proposal  to provide a streamlined form of domain name
registration designed to reduce costs and help trademark owners protect
both their trademarks and their consumers across hundreds of new
Internet registries, which is called "Limited Preventative
Registrations".

 

What is INTA's Position?  INTA supports the adoption of BOTH the
"Strawman Solution" & the Limited Preventative Registration proposals as
necessary implementation measures for protecting Internet users and
third-party intellectual property rights. INTA believes these
enhancements should be implemented so ICANN's underlying new gTLD policy
of Protecting the Rights of Others can be achieved - given the breadth,
scale and scope of the proposed expansion of the Domain Name System.

 

However, while both proposals provide some incremental improvements to
what is currently being planned, the Limited Preventative Registrations
(LPR) proposal offers significantly more protection. The LPR mechanism
enhances consumer protection by providing a cost-efficient and
streamlined method to register names across hundreds of new registries
as opposed to the current mechanism contained in the new gTLD program -
which in light of the volume & nature of applied-for new gTLDs - is
cumbersome, inefficient, resource-intensive and expensive.

 

So What Can You Do?  Please indicate your support for the enhanced
trademark protections  -- both the proposal for Limited Preventative
Registrations (LPRs) and the "Strawman Solution" proposal -- by sending
an email to: tmch-strawman@xxxxxxxxx <mailto:tmch-strawman@xxxxxxxxx>
by no later than Tuesday, January 15, 2013. (Note: you must reply to a
confirmation message after e-mailing your comment.)

 

What If You Have Questions? If the information provided by ICANN is not
sufficient for your organization to decide on whether to submit
comments, Claudio DiGangi, INTA's External Relations Manager, Internet
and the Judiciary, is available to answer your questions and provide
more information.  He can be reached directly at cdigangi@xxxxxxxx or
(212) 642-1720.

 

Trademark owners are counting on you.  Please let ICANN know your
position on these enhanced rights protection mechanisms.

 

Relevant Background References:

1.List of applied-for New gTLDs: List of Applied-For New gTLDs
<http://gtldresult.icann.org/application-result/applicationstatus> 

2.ICANN Phase I Economic Report on New gTLDs: ICANN's Economic Framework
Report on new gTLDs
<http://archive.icann.org/en/topics/new-gtlds/economic-analysis-of-new-g
tlds-16jun10-en.pdf> 

3.INTA Webpage on New gTLDs: INTA Webpage on New gTLDs
<http://www.inta.org/Advocacy/Pages/gTLDs.aspx>