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July 15, 2015 Vol. 70 No. 13 Back to Bulletin Main Page

INTA Members Out in Force for ICANN53 in Buenos Aires

Over 30 INTA volunteers attended the ICANN53 meeting in Buenos Aires, Argentina, during the last week of June. The topics at the front of everyone’s mind were the IANA transition, the new gTLD program and the search for a new ICANN CEO. They also found time to network and connect at INTA’s first reception organized as part of an ICANN meeting.

The IANA Transition
The stewardship proposal for the Internet Assigned Numbers Authority (IANA) transition has been completed and approved by the Generic Names Supporting Organization (GNSO) and all three proposals from the names, numbers and protocols communities will be reconciled by the IANA Transition Coordination Group (ICG) over the summer. As much as IANA appears to be moving forward, it is still dependent on the successful planning and implementation of the ICANN Accountability proposal. There is consensus that the ICANN Board needs to be more accountable to the community and that the powers to remove individual board members or the entire board should vest with the community. The mechanism on how to empower the community is still under debate, as certain proposals would require constituencies to become legal entities which would then be designated “members” of ICANN. Independent, outside counsel is working with the Cross Community Working Group (CCWG) on Accountability to devise a mechanism that would not require constituencies to form legal entities but still have the power to regulate the ICANN Board. The final proposal on Accountability is due at the end of July. ICANN has published a basic guide to the IANA functions to help the public understand this complex issue. You may access it here. The INTA Bulletin published an article discussing issues surrounding the IANA transition last year, which can be found here.

The New gTLD Program
There is much concern from the business and IP communities that ICANN will launch another round of the new generic top-level domain (gTLD) program without fully evaluating the success of the current round. There are some in the community who are pushing to launch a new round ASAP, as there are many brands that may want .brand gTLDs, there are regions and communities that were underrepresented in the first round and many new gTLDs are not selling.

INTA is not opposed to a new round in principle but is cautious about supporting a new round without a better understanding of how rights protection mechanisms (RPMs) are working and whether policies can be put in place to prevent registries from behaving badly. This includes strengthening compliance with current agreements and finding a way to prevent using the information in the Trademark Clearinghouse (TMCH) against brand owners who register their rights with it. Currently, names registered in the TMCH are being used to create “premium” lists that include registered trademarks. Brand owners are then charged hundreds or thousands more to register their domain names than the general public would be charged. This is the .sucks issue. Internet Committee member Marc Trachtenberg (Greenberg Traurig, LLP, USA) hit a home run with the ICANN Board, explaining in the clearest terms yet why the .sucks policies and business model violate ICANN’s Registry Agreement. ICANN Board members approached Mr. Trachtenberg for a copy of his statement.
ICANN CEO Search Begins
ICANN CEO Fadi Chedhade has announced his resignation and the Board has formed a search committee led by ICANN Board Member, George Sadowsky. The committee held an open forum and identified four criteria for choosing its next CEO: (i) technical expertise; (ii) understanding of the community and the multistakeholder model; (iii) leadership skills; and (iv) interpersonal skills. INTA offered a fifth criteria—business and branding acumen.

INTA Meets with ICANN Compliance Team
Internet Committee Chair Fabricio Vayra (Perkins Coie, USA), Co-chair John McElwaine (Nelson Mullins, USA) and INTA Senior Director of Internet Policy, Lori Schulman met with ICANN Chief of Compliance Allen Grogan and his team to discuss evidence of registry bad practices put together by INTA’s Internet Policy and Advocacy Subcommittee. They offered suggestions on how to enforce terms in the registry and registrar agreements including looking to the “legislative history” within the policy development process. Mr. Grogan was very keen on the idea and promised a response within the next month. INTA agreed to keep an ongoing dialogue with ICANN’s compliance team.

INTA at the ICANN Public Forum
The ICANN Board holds a public forum at the end of each meeting to receive comments from the community on selected topics. This year’s topics were the IANA transition and the new gTLD program. There is a feeling among some in ICANN that the new gTLD process has been “captured” by U.S. intellectual property interests and some stakeholders took the opportunity to comment to that effect. In response to these comments, Ms. Schulman posed the following statement and questions to the Board:

I am struck by comments in the room regarding trademarks and their impact inside ICANN and to end users in the community at large. Trademark laws are subject to a complex system of national, regional and international based systems including the Madrid Protocol and Paris Convention. My fear is that there is misinformation in the room about what trademarks are and are not. Trademark laws are deeply rooted in consumer protection and trademark protection contributes to security, stability and trust on the Internet. INTA is offering its assistance to the ICANN Board in educating the community on these important and complex matters especially in the light of the discussions we heard today about new gTLDs and the IANA transition. How can we help you? We are interested in entering into a dialogue on this topic. How we can offer educational content and support to clarify the effects and limits of trademark law as it relates to ICANN’s remit? We are happy to receive the Board’s response in writing.

INTA has already received a response from ICANN’s Development and Public Responsibility Department seeking help to build online courses/educational resources that will help the global community to better understand key topics, including the understanding of trademarks and how they relate to security and stability on the Internet. INTA is looking into organizing live educational events as well. There is a particular need to educate ICANN Governmental Advisory Committee (GAC) members on important trademark principles and how they relate to the Internet.

A Big Thank You to Marval O’Farrell & Mairal for Hosting the Networking Event of the Week
The social and networking highlight of the week was a beautiful reception at the Puerto Madero Yacht Club in Buenos Aires’ historic port, organized by INTA and the Brand Registry Group (BRG) and hosted by long-time INTA member firm Marval O’Farrell & Mairal. Sergio Ellmann, a partner at the firm and a past INTA Board Member, firm partner Iris Quadrio and partner and current INTA Board Member, Gustavo Giay, went out of their way to make everyone feel welcome. The event featured Argentina’s famous wines and boasted over 90 attendees from all parts of the ICANN community, including INTA members, members of the GAC, ICANN senior staff and the leadership of the Business Constituency, the Intellectual Property Constituency, the NonProfit Operational Concerns Constituency and the Registries and Registrars Constituency, among others. This was the first time that INTA organized an event like this and it was an unqualified success. It was a great opportunity to interact with different interest groups and break down the silos that typically exist at ICANN. Attendees are already asking for invitations to the next meeting in Dublin for ICANN54, and all agreed that Marval O’Farrell & Mairal outdid themselves as hosts.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association