In keeping track of ICANN developments on behalf of my customers, a recent meeting of the ICANN board in Norway on the 24-25th of September, resulted in a number of announcements posted on Sunday. Across a list of adopted board resolutions, point 2.6, regarding trademark protection interested me the most, which stated:

“Substantive Evaluation: The Applicant Guidebook will provide a clear description of “substantive evaluation” at registration, and retain the requirement for at least substantive review of marks to warrant protection under sunrise services and utilization of the URS, both of which provide a specific benefit to trademark holders. Specifically, evaluation, whether at registration or by a validation service provider, is required on absolute grounds AND use of the mark.

Substantive evaluation upon trademark registration has essentially three requirements: (i) evaluation on absolute grounds – to ensure that the applied for mark can in fact serve as a trademark; (ii) evaluation on relative grounds – to determine if previously filed marks preclude the registration; and (iii) evaluation of use – to ensure that the applied for mark is in current use.

Substantive review by Trademark Clearinghouse validation service provider shall require: (i) evaluation on absolute grounds; and (ii) evaluation of use.

URS timing: In response to public comment, change the time to respond to a complaint from 20 days to 14 days, with one opportunity for an extension of seven days if there is a good faith basis for such an extension.

The Board notes that the suggestion for a globally-protected marks list (GPML) was not adopted by the Board (in 2009), including for the following reasons: it is difficult to develop objective global standards for determining which marks would be included on such a GPML, such a list arguably would create new rights not based in law for those trademark holders, and it would create only marginal benefits because it would apply only to a small number of names and only for identical matches of those names.

The Board recognizes that additional policy development through the GNSO could lead to further mechanisms for enhanced protection for trademarks.”

It is good to see that trademark holders are being given further consideration in advance of what will be a complex and costly launch. Please keep tuned to our Domain News alerts, as well as to raise any questions with your Account Manager here at CSC.

Colin Darbyshire

Strategic Account Manager

New gTLD update – Adopted Board Resolutions
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