The Evolution of Trademark on the Internet, Is it Sustainable?

by Grace Mutung’u, March 2017

On 10^th  March2017, as the 58^th ICANN meeting in Copenhagen was about to begin, several US trademark practitioners wrote a letter decrying the potential of an ICANN policy on trademark protection to clawback on free speech. To many people around the world, trademark seems like a far removed topic. The letter however draws a nexus between trademark as manifested in domain names and freedom of expression. It also points a threat to the right of access to information.

During the meeting, I followed the issue by attending the meetings of the Rights Protection Mechanisms (RPM) working group and talking to various people, ranging from ICANN veterans and newcomers. I learnt several things.

RPM are a set of high level protections for existing trademark owners to protect their marks before, during and after ICANN’s new gTLD programme where over 1000 new top level domains will become available on the Internet. One gets a sense that the reason why there are protections throughout the spectrum for trademark owners must have been a compromise to get their buy in to the new programme. For big brands, the expansion of the Internet through this programme, brought with it the headache of securing their brand names in all the new top level domains. And not just their brand names but also variations. For instance, “nokia” would have needed to protect the brand name not just under the usual .com and net but also under at least 300 of the 1000 new gTLDs.

With the previous top level domains, the practice of cybersquatting, or registering domains associated with other people so as to later resell them was rampant.  The Universal Dispute Resolution System (UDRP)- an out of court mechanism through which trademark owners could complain against such bad faith registrations was therefore developed.

The three new mechanisms introduced in the new gTLD programme are Uniform Rapid Suspension System (URS), Trademark Clearinghouse (TMCH) and the Post Delegation Dispute Resolution Procedures (PDDRPs). The URS provides rapid temporary suspension for infringing domain names in the new programme. The TMCH is a centralised database connected to each new top level domain where brand owners can submit their trademarks. Once a trademark is under the TMCH, the owner has priority over that name before the new top level domain starts the business of selling domain names to the public. PDDRP is a procedure that allows trademark owners to seek redress against a registry whose conduct is alleged to cause trademark abuse. RPMs exist beside the UDRP.

The US trademark practitioners letter raises salient issues about the weight given to the commercial community under the new gTLD programme. It points out that the clearinghouse is creating a new regime that is beyond trademark, by allowing brand owners to register their marks together with variations of the marks and names associated closely or vaguely with the names. This potentially locks out marks outside the TMCH which include similar names, names from other places and yet-to-enter-the-Internet names. Under trademark law, the concept of classification allows for “Marshall” to be a society in Europe, a headphones brand owned by one person, a department store by another, a car dealership by another and an agricultural engineer owned by yet another.  The RPM working group ought therefore to consider what should happen if all the Marshall mark owners submit their trademarks to TMCH and obtain protection for variations, designs and associations of the name under all the new gTLDs. What would this mean for other rights associated with the same name?

The practitioners are also concerned with the current practice where the submissions to the TMCH are not public. It is therefore not possible to know which names are under the protection of this mechanism, raising an issue of access to information of a public nature.

Looking back at the history of commercialisation of the Internet, domain names became linked to brand names because of the premium attached to branding and Western concepts of intellectual property. However, the Internet has grown beyond commercial interests and moved to all parts of the world, where beyond trademarks, other rights are also at play. For instance, the UK, South Africa and Kenya in their local namespace dispute resolution policies acknowledge that a domain name registration could be abusive if it infringes on another person’s rights or prevents a person from exercising their rights. The rights could range from cultural, language or community rights.

ICANN established the RPM working group to assess the effectiveness of each RPM and “to consider….the overarching issue as to whether or not all the RPMs collectively fulfil the purposes for which they were created or whether additional policy recommendations are needed, including to clarify and unify goals”

Listening to the proceedings of the RPM working group, there were many in defence of stronger protection for existing brands. Reflecting on these conversations as an African, where there was celebration when .za hit one million registrations, or as a Kenyan, where the uptake of .ke is a paltry 66,000 registrations, I cannot help but wonder, do the Rights Protection Mechanisms envisage the rights of those yet to join the Internet? Is the TMCH a protectionist venture or can it be made sustainable for future generations?

The NCUC is a space within ICANN for individuals and organisations supporting non-commercial interests in ICANN. NCUC members are participating in the RPM working group where they advocate for more balanced RPMs. You can protect your non-commercial domain name rights and put a halt on trademark overreach by joining NCUC. You can follow the RPM working group here.