On July 16, 2000, the ICANN Board of Directors approved a resolution regarding the introduction of new TLDs in a "measured and responsible manner." This resolution provides that applications submitted by parties wishing to operate as a registry for any newly created TLD should include "...measures proposed for minimizing use of the TLD to carry out infringements or other abuses of intellectual property rights." The Board's resolution also provides guidelines it will consider in assessing proposals for selection of new TLD registries, which include:
It is clear from the language of the Board's resolution that any applicant seeking to win Board approval must include in its application proposals for mechanisms that provide protection for intellectual property rights. In this regard, the intellectual property community would like to reach out to prospective applicants by providing a brief overview of the mechanisms that each application must, at a minimum, include in order to provide the proper intellectual property protections called for in the ICANN Board's resolution.
Most of these mechanisms are based upon those that have demonstrated effectiveness in the current unrestricted or generic TLD environment (i.e., in .com, .org and .net). While we welcome discussion of other ideas about how to achieve the goal of minimizing infringement and other abuses of intellectual property rights, these mechanisms should provide the starting point for that discussion.
1. GENERAL INTELLECTUAL PROPERTY SAFEGUARDS.
A. Registration Requirements and Procedures
All registrants in new TLDs should be required
The above requirements already apply to all registrants in the established TLDs. In all TLDs, knowing submission of false contact data, or use of a domain for illegal purposes, should be grounds for revocation of the registration.
In addition, applications for restricted
or chartered TLDs should must have clear and specific rules about
who is permitted to register second-level domain names in that
space, and about what activities are and are not appropriate
or acceptable on the corresponding sites, and for what purposes.
All applicants for restricted or chartered TLDs should provide
speedy and efficient mechanisms, which can be invoked by interested
third parties, to implement and enforce these rules. mus These
applications must include in its by-laws rules that provide for
efficient and speedy mechanisms provide a mechanism for resolving
violations of the TLD's charter or restricted nature, and must
provide that any third party shall have standing to challenge
the TLD under these mechanisms. In this regard, a procedure must
be established whereby a registrant found to have provided false
information as to its entitlement to register in that TLD, or
to have registered or used a domain name registration in a chartered
or restricted TLD in violation of its established purpose, will
have the offending domain name removed from the TLD.
ICANN statistics show that the UDRP provides a valuable tool for the large number of cases where domain names in .com, .net and .org have been registered in bad faith. Approximately 1,500 UDRP proceedings have been initiated for determining rights of domain name holders who are alleged to have registered and used domain names in bad faith and roughly 900 decisions have been rendered. The results of UDRP proceedings indicate that cases involving cyberpirates and others acting in bad faith are quickly resolved in a fair, efficient, and cost-effective manner, and that domain name registrants have prevailed when their legitimate rights to the domain name have been established.
Given the success of the UDRP in existing open TLDs, the intellectual property community, registrars, prospective registry administrators, and other interested parties should turn their cooperative efforts towards ensuring application of the UDRP in new open TLDs and finding ways in which the UDRP can be expanded in order to cover intellectual property violations that occur in chartered or restricted TLDs.
In particular, registries in new chartered
or restricted TLDs should supplement their unilateral capacity
to revoke a fraudulent registration by adhering to an expanded
UDRP, under which the registration or use of a domain name in
a chartered or restricted TLD in violation of the TLDs charter
or other pertinent rules would demonstrate bad faith. This would
at least give an intellectual property rights owner or an interested
member of the consuming public the ability to ensure that a bad
faith actor will not be permitted to use the name in the chartered
or restricted TLD.
Additionally, all applications for new TLDs should set forth the means by which the registry administrator will work with accredited participatingregistrars to provide the public unfettered access to complete and up-to-date data for each registered domain name record which, at a minimum, must contain the following:
In order to offer workable protection for intellectual property rights, the information set forth above must be available on a publicly accessible database, which is searchable by domain name, registrant's name, registrant's postal address, contacts' names, NIC handles and Internet Protocol address. Additionally, members of the public need to be able to search for all domain names registered to a particular registrant, at a particular postal address, or involving a particular contact, without an arbitrary limit (e.g. NSI search aborts at "50" hits and searches by postal address cannot be conducted). This ability is important under the UDRP, for example, to demonstrate a "pattern" of bad faith conduct. Finally, it is essential that all applicants for new TLDs, as a condition of their accreditation and as a material element in their continued accreditation, agree to participate in the operation of a cross-registry WHOIS database, which will provide searching capabilities and access to all information concerning domain name registrations regardless of which TLD the domain name is registered in or which registrar processed the domain name application. Such agreement shall further require all applicants to keep the cross-registry WHOIS database current and comprehensive.
2. START-UP PHASE SPECIFIC SAFEGUARDS.
In addition to the general mechanisms for
intellectual property protection that must be addressed by each
TLD applicant, each application also must include a proposal
for providing adequate intellectual property protection during
the start-up phase of the new TLD. In this regard, it is critical
to have a procedure whereby owners of trademarks and service
marks having been registered in a national trademark office for
at least one year prior to the creation of the new TLD can pre-register
on a first-come, first-served basis, the material textual element(s)
(i.e., the word portion of their marks) as a domain name
in a fully open TLD. Such domain name pre-registrations would
be confined to a single registration corresponding to a trademark.
In the case of TLDs that are restricted or chartered, not fully
open (i.e., restricted or chartered domains with limited
scope, including non-commercial domains and/or personal domains)
such pre-registration also would be subject to compliance with
the charter or registration requirements of such TLD.
By highlighting those mechanisms that are
essential to effective intellectual property protection in any
new TLDs, we hope to begin a dialogue among the intellectual
property community, registrars, prospective registry administrators
and other concerned parties. Our goal is to work together to
develop proposals for new TLDs that will achieve the goals for
intellectual property protection called for in the ICANN Board's
July 16th resolution.
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