The Internet Committee of the International Trademark Association started its work for the year yesterday by asking us to introduce ourselves and outline what we wanted to work on. I got carried away with mine, so I’ve decided to expand my remarks into a treatise.
I have been involved in domain name disputes since 1994 (when I stupidly didn’t register I have been following domain name politics since the 1998-2001 era that saw the creation of ACPA, ICANN and the UDRP. I have represented famous mark owners policing their marks in various fora (and have also assisted some famous mark owners in becoming registrars). I was actually the GC of a registrar for about a day.
While I concur in my fellow trademark lawyers’ desire that there be a voice for the TM lobby before ICANN, it is my view that ICANN has resembled a captured regulatory agency in its first ten years, and, as the tether to DoC is weakened, it is my fear, rightly or wrongly, that ICANN will devolve into a little more than a trade association for domain interests.
The negotiating team on behalf of TM interests (INTA and IPC) are very able and I think that to the extent that that TM interests can accomplish goals working within the ICANN process, this group will achieve the best possible result (within that limited context).
Having said that, I think there are two other courses of action that the TM world should explore, if it wants to actually change the status quo of brands within the domain name system. One is litigation (which discussion can be held another day depending on how badly the new gTLD process goes).
The more interesting (and difficult) approach is a lobbying and educational effort as to the role of new TLDs in creation of a safe space for e-Commerce. I have preached on this before and my view is:
Because of (legitimate) free speech and privacy concerns (and the exploitation thereof), DNS-wide acquisition and WHOIS standards will never be adequate from a consumer protection/brand protection point of view. Therefore it seems to me that there has to be a commercial ‘confort’ zone within the DNS that does have adequate standards – for example, standards as to how domains are distributed and to the identification and verification of the people who register the domains.
The ‘High Security Zone’ paper that ICANN commissioned is a useful starting point for this conversation. It says ‘this is one view of what a safe and secure TLD looks like.’ Frustratingly, ICANN, being ICANN, neuters the concept by saying in effect: ‘well, we won’t make HSZ concepts mandatory and we won’t give anyone an incentive to adopt this.’
I should mention that when I attended a meeting at the Seoul ICANN, and the question arose as to possibly making HSZ practices standard, one ICANN official said that it would harm ICANN’s initial contact with its ‘clients’ (Client was the word used to describe new gTLD applicants) if it imposed such costs of doing business on them.
That’s one ICANN official’s mindset, for what it’s worth.
So ICANN is not going to impose ‘commercial zoning’ on the entire DNS (nor should it) and won’t itself create a secure commercial zone within it, so I think that it’s up to the legitimate business community to create one (and urge that ICANN does as much as it can in assisting this). While this task is going to require the efforts and resources of much more than the brand protection commmunity, folks like the TM lobby can advance the effort greatly by thinking about the development of the structures of a working HSZ:
What are the elements of a HSZ? How do you get brand owners to do business in the HSZ, given their prior investment in non-HSZ TLDs? How do you get customers to patronize the HSZ sites? Hard questions, but a successful HSZ would make a significant dent in counterfeits, cybersquatting, phishing and spoofing. A worthwhile goal.
That’s what I want to work on.