Fordham Focus 4: gTLDs -- current issues and ongoing trade mark concerns

Mary Wong

Moderated by legendary blogger and Leason Ellis attorney Marty Schwimmer, the Fordham agenda switched to generic top-level domains (gTLDs) and their attendant headaches. First to speak was Mary W. S. Wong, who gave a snapshot of the state of play of gTLD applications.  Most popular domains so far as .app (13), .home (11) and .art (10) -- with .design not far behind at 8. Of the nearly 2,000 applications for gTLDs, many have been the subject of over 270 objections. Of these, 69 are legal rights objections, reflecting concerns of brand-owning stakeholders among others.  Some 242 early warnings have also been received from governments.  Mary then reviewed both grounds for dispute and mechanisms for resolving disputes, asking: "is ICANN becoming a reluctant repository of trade mark law?" as a result of its involvement in dispute resolution processes.

Pressed by Marty to explain how ICANN can distinguish between good applicants and bad ones, Mary pointed out that all applicants were examined -- the problem of choice runs between competing good applicants as well as good v bad ones -- and expressed the hope that competing applicants would reach a negotiated understanding. Failing that, whoever has the most, wins. Open (licensable), restricted and single registrant generic strings were also discussed.

Next to speak was Dickerson M. Downing (Crowell & Moring), speaking on the Trademark Clearinghouse scheme and the notice provisions that it offers to existing trade mark owners.  David E. Weslow (Wiley Rein) filled in some of the horrific detail of the possible costs that might be incurred by trade mark owners in seeking to have their marks registered for clearinghouse purposes.

Steven J. Metalitz (International Intellectual Property Association) then updated us on the current state of Whois and the problems of incomplete and inaccurate information being registered in respect of contact data for website owners.  A new version of the register accreditation agreement is expected to require registrars to obtain proper information and to enforce this duty.  The current system, said Steven, "is broken" -- and even if it wasn't, many registrants are by proxy with the result that you can't find out the name of the real registrant anyway.