Formal Request for Reconsideration challenges trademark owners ability to add 50 derivatives of trademarks to clearinghouse.
The GNSO Noncommercial Users Stakeholders Group has submitted a Request for Reconsideration to ICANN’s Board Governance Committee concerning a decision by ICANN to extend trademark protections in new top level domains.
The reconsideration request argues that ICANN shouldn’t have added the so-called “Trademark +50” protection in the Trademark Clearinghouse (TMCH).
The TMCH lets companies protect their brands in new TLDs, giving them some participatory rights in sunrise periods and warning would-be domain registrants that their registration might infringe a trademark.
The original plan was that a company like Microsoft could add marks such as “Microsoft” to the list.
But ICANN changed the game later, allowing companies to add their trademark plus up to 50 derivatives if the mark had been subject to some sort of cybersquatting in the past.
The reconsideration request says this is in direct contradiction to what ICANN CEO Fadi Chehade told U.S. Senator Pat Leahy in a letter sent in September, 2012. The letter stated:
It is important to note that the Trademark Clearinghouse is intended to be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights…
The NCSG claims that Chehade has done exactly what he told Leahy he wouldn’t do.
The group is concerned that this massive expansion of the TMCH would have a chilling effect on prospective domain registrants:
This massive expansion of trademark holder’s rights will have a particularly chilling and pre-emptive effect on noncommercial speech. Prospective registrants will be faced with new legal risks should they dare to attempt to register a domain name that may trigger a TMCH claims notice, despite their intended use of the domain being perfectly legal and non-infringing. Noncommercial users are often fiscally challenged without the financial resources to retain legal counsel or, in many cases, to even engage specialist counsel to determine whether their proposed name is infringing or lawful fair use. Many noncommercial users will simply abandon their registration upon receipt of a TMCH.