The group of law professors and practitioners with expertise in trademark law. have written to the Co-Chairs of the ICANN GNSO PDP Working Group on ‘Review of all Rights Protection Mechanisms (RPMs) in all gTLDs’ to express a shared concern about how rights protection mechanisms at ICANN are developing
The group states that there is a troubling tendency for rights protection mechanisms at ICANN to disregard the delicate balance that domestic trademark law strikes between the business interests of trademark owners and the free expression rights of their competitors and the general public.
We are concerned that the expansive protections recently demanded by trademark owners are inconsistent with basic propositions of trademark law. A case in point is the Trademark Clearinghouse, a mechanism established for the new gTLDs that gives trademark owners special rights to prevent the registration of domain names that contain their trademarks. Those registered in the Trademark Clearinghouse have access to a sunrise period that gives them priority access to domain names in a new gTLD, and to a trademark claims process that gives them early warning when domains the contain their trademarks are registered.
The group notes that the problem with these mechanisms is that they go beyond the rights that domestic trademark law recognizes. and that the importance of maintaining these limits is that in their absence, these new rights protection mechanisms risk interfering with:
- the free expression rights of those wishing to use generic words and proper names in
domains, without fraudulent intent;
- the free expression rights of those wishing to use trademarks for the purposes of
commentary, parody, or criticism of the trademark or its owner; an
- the ability of other legitimate trademark owners to use identical or similar trademarks
in a second-level domain name.
In particular, two features of the Trademark Clearinghouse disrupt the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants.
Our second concern the group writes
is with the secrecy of the Trademark Clearinghouse database. Given that the Trademark Clearinghouse is exercising a quasi-public function, we believe the public should be able to search its database just as the public is able to search the USPTO database for trademarks. Trademark registries have always been open to public searches, limited only by physical access. In the digital age, the concealment of these records is a momentous and unjustifiable retreat from transparency.
The letter urges ICANN to reevaluate the premises of many of its existing rights protection mechanisms to ensure that they do not exceed the purposeful boundaries of trademark rights. Such a review is appropriately within the scope of the Review of all Rights Protection Mechanisms PDP Working Group. We respectfully request that this review be undertaken. Until such a review is undertaken, any further expansion of the rights provided by the Trademark Clearinghouse to domains that it does not already cover, including legacy domains, would be premature.
Find the full letter (pdf) here: https://www.eff.org/files/2017/03/10/tm_scholars_letter_to_icann_final.pdf