Are the ICANN Rights Protection Mechanisms Contrary to Trademark Law?

Most trademark practioners are familiar with the Internet Corporation for Assigned Names and Numbers (“ICANN”), an organization that is private sector and non-profit.  Assembled in 1998, ICANN has become responsible for overseeing coordination and management of several Internet databases in order to ensure uniformity and consistency among differing operations across the web.  Most notably, ICANN has become primarily responsible for overseeing the Internet’s global domain name system (“DNS”), which included the rollout of top-level domains (“TLDs”) and generic top-level domains (“gTLDs”); as well as the introduction of non-Latin characters in web domains.

Earlier this month, ICANN met in Copenhagen and were faced with an open letter from the Electronic Frontier Foundation (“EFF”) and co-signed by several trademark law practioners and academics.  In the letter addressed to the co-chairs of the ICANN GNSO PDP Working Group on the Rights Protection Mechanisms (“RPMs”), the EFF and friends denounced ICANN’s current RPMs as divisive and contrary to the fundamentals of trademark law.

In support of their arguments, the EFF argues that ICANN’s current RPMs and policies favor the rights of famous brand owners or large corporations due to its procedures and high pricing.  As such, the RPMs result in an unbalanced system that works against the competitors of famous brand owners and the public in general.

Moreover, the EFF takes particular issue with ICANN’s Trademark Clearinghouse.  Created to allow companies that own preexisting rights in a mark to have first shot at registering specific domains, the EFF argues that this process becomes a barrier to the free market as companies with big budgets can easily purchase a multitude of domains that have only tentative ties to their actual marks.

Further, the EFF alleges that the Trademark Clearinghouse extends protection far beyond what is normally allowed by traditional trademark law.  For example, in its current form, the Trademark Clearinghouse allows for the inclusion of some design marks which are arguably not normally protectable without accompanying designs.  Similarly, the EFF complains about a lack of transparency when it comes to how ICANN maintains its trademark registration records.  Noting that national trademark registries have been traditionally open to public search and review, the EFF argues that ICANN’s decision to keep its registry private is misguided, especially in light of the search technology that exists today.

In its defense, ICANN notes that, as with many of its procedures, the Trademark Clearinghouse and its RPMs came as a result of several years of planning that included a wide variety of stakeholders, not just famous brand owners.  Likewise, they argue that their decision to recognize the aforementioned design marks merely aids in providing uniform trademark law guidelines on the Internet in the face of opposing standards of registration among differing countries and jurisdictions.  Lastly, in response to the EFF’s criticisms private recordkeeping, ICANN argues that this practice deters bad-faith actors from trying to capitalize on domain-squatting.

While only time will tell whether ICANN’s policies will evolve enough to balance out the needs of both famous brand owners and small business owners alike, ICANN, in the meantime, has noted that it currently uses a RPM Review Working Group to constantly review and restructure the current RPMs in place.




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