On Monday, May 11, 2015, INTA Immediate Past President Mei-lan Stark (Fox Entertainment Group—USA) testified before the United States Congress at a hearing on “Stakeholder Perspectives On ICANN: The .Sucks Domain And Essential Steps To Guarantee Trust And Accountability In The Internet’s Operation.” Representing the interests of brand owners, Ms. Stark was one of eight witnesses invited to speak at the hearing being held by the U.S. House of Representatives’ Subcommittee on Intellectual Property, Competition and the Internet of the Committee on the Judiciary.
Back in 2011, following the announcement by ICANN (the Internet Corporation for Assigned Names and Numbers) that it planned to allow an unlimited number of new generic top-level domains (gTLDs) to be introduced on the Internet, the Subcommittee on Intellectual Property, Competition and the Internet of the Committee held a hearing to discuss the implications of an expanded domain name system (DNS). Ms. Stark testified at the hearing, expounding the risks new gTLDs will bring to both businesses and consumers. ICANN’s new gTLD program launched in January 2012. The first of the new gTLDs went live in early 2014 and today there are over 600 active gTLDs.
In March 2014, the U.S. Department of Commerce, National Telecommunications and Information Administration (NTIA)—which is contracted by ICANN—announced its intent to transfer governance of the DNS from the U.S. Government to a global multi-stakeholder community (including businesses, governments, noncommercial users and civil society). To this end, this week the Subcommittee on Intellectual Property, Competition and the Internet held another hearing. Entitled “Stakeholder Perspectives On ICANN: The .Sucks Domain And Essential Steps To Guarantee Trust And Accountability In The Internet’s Operation,” the hearing focused on issues related to the transition of oversight of the DNS away from NTIA.
While the new gTLD program has presented intriguing commercial possibilities, trademark owners have, since the very beginning, expressed grave concerns over the potential harms that would likely ensue. And while hundreds of new gTLDs have been delegated without controversy, there has been growing concern within the trademark community over the failure of some registries to comply with the terms of the Registry Agreement (RA) and ICANN’s failure to enforce the RA. While many registries are following the RA, some are not. The launch of the .sucks domain is one such example, and the Committee used this week’s hearing to consider the DNS transition in light of the issues raised by the launch of the new .sucks gTLD.
At the 2011 hearing Ms. Stark described how, in order to protect their reputation and the safety of their consumers on the Internet, businesses would have to spend significant resources on defensive domain name registrations, as well as incur additional costs associated with trademark rights enforcement. At the May 2015 hearing Ms. Stark offered the trademark owners’ perspectives on ICANN’s performance regarding the .sucks launch and the concerns it raises for the potential relinquishment of NTIA stewardship of key DNS functions.
To provide context, Ms. Stark (pictured left) first summarized the process leading to the implementation of new rights protection mechanisms that would address concerns raised by intellectual property rights owners including, for example, the Trademark Clearinghouse (TMCH) which allows trademark owners to pre-register domains corresponding to their marks before such names are made available to the general public. She described how such mechanisms would also foster trust and accountability in ICANN and the new gTLD program.
Turning to the .sucks domain name, Ms. Stark described its launch as an example of ICANN’s operational deficiencies and how its owner, Vox Populi, is using the very mechanisms designed to protect trademarks and consumers to charge businesses exorbitant fees to register their marks as domain names. Vox Populi charges trademark owners $2,499 per domain. This is 250 times more than it intends to sell domains to the consumer at $10 per domain. Only trademarks included in the TMCH are subject to the $2,499 pricing. The TMCH, intended to be a rights protection mechanism, is now being manipulated to set unfair pricing and specifically targets trademark owners who have been diligent in protecting their rights.
Concluding her testimony, Ms. Stark explained how the .sucks controversy has both shined a light on ICANN’s operational deficiencies and demonstrated that ICANN is not yet ready to transition stewardship away from NTIA. To this point, Ms. Stark again stressed that INTA supports the transition but only when strong accountability and transparency mechanisms can be assured. “Until such accountability mechanisms are implemented,” said Ms. Stark, “continued U.S. government and Congressional oversight is necessary.”
Wrapping up, Ms. Stark reminded Congress that the many benefits of the of the new gTLD program will likely not be realized unless the program is effectively and fairly administered, and that ICANN’s decisions and actions directly impact not only the future of the Internet but the business and consumers who use it. She also stressed that INTA stands ready to help ICANN “develop and implement a reliable framework that promotes fair competition, choice and trust in the new gTLD program.”
Click here to read the full testimony submitted by INTA for the May 11, 2015, hearing.