ICANN approves unprecedented protections for trademark holders

"We are on target with our dates". In a video published today (20 March 2013), ICANN CEO Fadi Chehadé has reaffirmed his organization's readiness to execute the new gTLD program on schedule.

Specifically, Chehadé confirmed that the first batch of Initial Evaluation (IE) results will indeed be published by ICANN this Friday (March 22) as planned. If the new gTLD program was a driving test, then IE is the written exam part. The actual driving test for applications will come later, with pre-delegation technical testing to ensure that everything works as it should. IE is focussed on examining that the applications submitted measure up the new gTLD program's standards of operation, administrative and financial capabilities and resilience. IE results will be published in the order of the prioritization draw held by ICANN last December to assign release priority to the 1,900 applications or so the organization has received.

But for ICANN, staying on track also means completing the implementation of the Trademark Clearinghouse (TMCH), the database commissioned to provide rights holders with greater protection than ever possible before in the domain name ecosystem.

In the video, Chehadé confirms that rights holders will be able to start accessing the TMCH on March 26, as planned.

But beyond this, a number of additional trademark protections recently requested by the Intellectual Property and Business communities and grouped in what has become known as the "strawman proposal" will be implemented without further delay.

These are:

  • A 30-day notice period before each sunrise.

  • An extension of the trademark claims period from 60 to 90 days.

  • An extension of the trademark claims protection to abuse names.

The last feature is probably the one that will resonate the most with trademark holders. What it means is that by registering their trademarks in the TMCH, they will not only be protected for the exact match of the string concerned, but also for up to 50 confusingly similar terms, provided they have been part of a UDRP (the alternative dispute resolution procedure set up specifically for domain names at the start of the century) procedure in the past.

The program's next main deadline is 23 April 2013, when Chehadé's staff plan to be ready to request that the organization's Board approve the delegation of the first of the new gTLDs, thereby giving the go-ahead for the operator of the first of these new internet suffixes to sign its contract with ICANN and proceed to launch.

However, Chehadé warned that unless concluded soon, ongoing negotiations with registrars and registries on the contract they will be required to sign with ICANN for new gTLDs could put this date at risk.

Written by Written by Stéphane Van Gelder (Chairman and Managing Director of Stéphane Van Gelder Consulting Ltd.)

20 March 2013