IRT Report - submissions from Griffith Hack Patent & Trade Mark Attorneys

["Jurgen Bebber" <jurgen.bebber@xxxxxxxxxxxxxxxxxxx>]

Dear Sirs

We are a firm of patent attorneys, trade mark attorneys and lawyers in the 
field of intellectual property.  We act for individuals through to large 
multi-national corporations.  The proposed expansion of the gTLDs comes as a 
great concern to many of our clients.  We welcome the IRT's report and commend 
the IRT in its efforts to propose solutions in the short time frame provided.

Whilst the proposals the IRT has put forward are a step in the right direction 
insofar as trade mark owner rights are concerned, we have some doubts as to 
whether this will be sufficient to address the main concern, namely cyber 
squatter behaviour, in particular some time after the introduction of each new 
gTLD.  In other words, the proposals give trade mark owners some mechanisms to 
protect their brands but they do not provide would-be cyber squatters with any 
notable disincentive.   

Also, most of the proposals apply at the time of the introduction of the new 
gTLD.  Trade marks are an ever evolving form of IP with new trade marks applied 
for and registered every day.  The IRT does not, in our view, sufficiently 
address the concerns of future trade mark owners.

It is possible that the below proposal was raised in the IRT discussions 
preceding the drafting of the IRT report and we are aware that some individuals 
raised similar proposals at ICANN's Sydney Meeting in June 2009.   

We encourage the IRT to consider a "publish and oppose" system whereby each 
second level domain name is published on a central database for a short period 
prior to registration (eg. 2 days).  Trade mark owners with a concern about 
cyber squatting behaviour would be able to continuously watch new applications 
and "oppose" an application of concern in a similar manner to the proposed URS.

In our view, this would constitute a genuine disincentive to cyber squatting 
behaviour and it would also remove the need for an IP clearinghouse and the 
proposed GPM List.  Of course, safeguards would need to be put in place for 
abusive oppositions by trade mark owners.  The IRT has already discussed such 
mechanisms (such as the "three strikes" policy), which could also apply here.

It is not necessary for domain names to be registered with immediate effect.  
In fact, some ccTLDs are registered some time after application (after certain 
information has been validated).  A short publication period would not affect 
genuine commercial practices whilst significantly affecting practices that are 
frowned upon by many in the community such as domain tasting and cyber 
squatting.  The down side of abusive use of the system by trade mark owners may 
be suitably addressed and does not, in our view outweigh the likelihood of 
abuses of new gTLD spaces for cyber squatting behaviour.

Regards

Jürgen Bebber
Senior Associate

GRIFFITH HACK
Patent & Trade Mark Attorneys
Lawyers 

Melbourne Office 
Level 3, 509 St Kilda Road 
Melbourne
VIC 3004 Australia

Tel.    + 61 3 9243 8300
Fax.    + 61 3 9243 8333
Email   jurgen.bebber@xxxxxxxxxxxxxxxxxxx
Web     www.griffithhack.com.au


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