Trademarks

Updates

12 Sep 2017

In a letter sent to the ICANN Board on 7 September and published by ICANN on 12 September, Amazon asks the Board ’to immediately approve [its] long-pending .amazon applications’. The company builds its request on the July 2017 declaration of an Independent Review Process Panel (IRP), which concluded that the Board acted in a manner inconsistent with ICANN bylaws when rejecting the application for .amazon. The letter also underlined several reasons why Amazon is of the view that its generic top-level domain applications should be approved: ‘because there is no sovereign right under international or national law to the name “Amazon”, because there are no well-founded and substantiated public policy reasons to block our Applications, because we are committed to using the TLDs in a respectful manner, and because the Board should respect the IRP accountability mechanism’.

20 Aug 2017

In a trademark dispute that started in 2012, the US Supreme Court is now asked to invalidate the Google trademark, as, according to the petition, ‘there is no single word other than google that conveys the action of searching the Internet using any search engine’. The dispute has its origin in a 2012 cybersquatting case, when David Elliot and Chris Gillespie registered over 700 domain names which included the word ‘google’, triggering a cybersquatting complaint from Google under the Uniform Domain Name Dispute Resolution Policy. After Google won the dispute, Elliot and Gillespie sued the company asking for the trademark to be invalidated. In May 2017, a Court of Appeals ruled in favour of Google, one of the reasons being that Google is more than a search engine. Now, Elliot and Gillespie have appealed the Court’s decision to the US Supreme Court, asking, among others, whether verb usage of a trademark generic usage is a matter of law, and whether verb usage of a trademark is relevant to whether that trademark has become generic.

11 Jul 2017

As part of the Independent Review Process (a procedure mandated by ICANN bylaws) initiated by Amazon over ICANN’s decision to reject the company’s application for the .amazon new generic top-level domain (and its equivalents in Chinese and Japanese), an Independent Review Panel recommended that the ICANN Board re-evaluates Amazon’s application. The Panel determined that the ICANN Board acted in a manner inconsistent with ICANN bylaws, and that the Governmental Advisory Committee - GAC (whose objection to .amazon determined the Board to reject the application) ‘failed to allow the applicant to submit any information to the GAC and thus deprived the applicant of the minimal degree of procedural fairness before issuance of its advice’. According to the Panel, the ICANN Board ‘should make an objective and independent judgment regarding whether there are, in fact, well-founded , merits-based public policy reasons for denying Amazon’s applications’.

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Knowledge and ideas are key resources in the global economy. The protection of knowledge and ideas, through IPR, has become one of the predominant issues in the Internet governance debate, and has a strong development-oriented component. Internet-related IPR include copyright, trademarks, and patents.

Trademarks are relevant to the Internet because of the registration of domain names. In the early phase of Internet development, the registration of domain names was based on a first come, first served basis. This led to cybersquatting, the practice of registering names of companies and selling them later at a higher price.

 

Mechanisms for the protection of trademarks

 

This situation compelled the business sector to place the question of the protection of trademarks at the centre of the reform of Internet governance, leading to the establishment of ICANN in 1998. In the White Paper on the creation of ICANN, the US government demanded that ICANN develop and implement a mechanism for the protection of trademarks in the field of domain names. Soon after its formation, ICANN introduced the WIPO‑developed Universal Dispute Resolution Procedure (UDRP).

The recent introduction of the new gTLDs reinvigorated the relevance of trademark for domain names, ICANN, and overall IG.

ICANN’s Trademark Clearinghouse (TMCH) authenticates information from rights holders and provides this information to registries and registrars.

The UDRP - the primary dispute resolution procedure - is stipulated in advance as a dispute resolution mechanism in all contracts involving the registration of gTLDs (e.g. .com, .edu, .org, .net), and for some ccTLDs. Its arbitration awards are applied directly through changes in the DNS without resorting to enforcement of trademark protection through national courts.

Events

Actors

(WIPO)

WIPO has developed, together with the

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WIPO has developed, together with the Internet Corporation for Assigned Names and Numbers, the Uniform Domain Name Dispute Resolution Policy (UDRP). Under this policy, WIPO’s Arbitration and Mediation Centre provides dispute resolution services for second level domain name registrations under generic top-level domains (gTLDs). The Centre also administers disputes under a specific policies adopted by some gTLD registries (e.g. .aero, .asia, .travel). In addition, the Centre offers domain name dispute resolution services for over 70 country code top-level domains (ccTLDs). WIPO has developed a ccTLD Program, with the aim to provide advice to many ccTLD registries on the establishment of dispute resolution procedures.

(INTA)

INTA promotes trademarks with the aim of protecting consumers and promoting fair global commerce.

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INTA promotes trademarks with the aim of protecting consumers and promoting fair global commerce. The organisation carries out policy advocacy through amicus briefs and model laws and guidelines. It has carried out research on different issues such as the EU trademark system and country guides, and also publishes the trademark reporter, a journal on trademark law. INTA actively engages with ICANN, and has been carrying out an impact study on the costs of new gTLDs.

(ICANN)

ICANN is responsible for coordinating the evolution and operation of the Domain Name System.

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ICANN is responsible for coordinating the evolution and operation of the Domain Name System. The organisation coordinates the allocation and assignment of names in the root zone of the DNS, and the development and implementation of policies concerning the registration of second-level domain names in generic top-level domains (gTLDs). It also facilitates the coordination and evolution of the DNS root name server system. When it comes to gTLDs, ICANN concludes agreements with registry operators (for the administration of each gTLD), and accredits registrars. In the case of country code top-level domains (ccTLDs), ICANN only goes as far as (re)delegating them on the basis of some high-level guidelines.

(GAC)

The protection of intellectual property rights is one of the many policy areas the GAC has been focusing on.

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The protection of intellectual property rights is one of the many policy areas the GAC has been focusing on. In its role as a consultative body to the ICANN Board, the committee has issued advice tackling the protection of trademarks, especially in the context of the New gTLD Program. In the GAC’s view, the introduction of new gTLDs should take into account third party rights, including trademarks, while registries should put in place policies for limiting the need for defensive registrations by trademark holders, and for minimising cybersquatting. Moreover, domain name registration policies should include prohibitions against trademark infringements.

(WTO)

The WTO’s involvement in e-commerce-related issues started in 1998, when the Ministerial Conference adopted th

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The WTO’s involvement in e-commerce-related issues started in 1998, when the Ministerial Conference adopted the Declaration on Global Electronic Commerce, which called for the development of a work programme on e-commerce. The programme, also adopted in 1998, provides a definition for e-commerce and sets out responsibilities for WTO bodies in e-commerce-related areas. Other e-commerce-related initiatives undertaken by the WTO include: a moratorium rendering electronic transmissions free of custom duties among WTO member states; a dispute resolution mechanism which addresses, among others, cases involving electronic transactions; and the annual WTO Public Forum. There are ongoing discussions among WTO member states as to whether the organisation should play an increasing role in e‑commerce.

(GCIG)

As part of its research on Internet-related dimensions of public policy, the Commission also looks at issues c

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As part of its research on Internet-related dimensions of public policy, the Commission also looks at issues concerning the protection of intellectual property rights, including trademarks, in the online space. In 2016, for example, it published a paper on the implications of new generic top-level domains (gTLDs) for trademarks and freedom of expression. A 2016 paper on Internet intermediaries as platforms for expression and innovation discussed, among others, the liability of Internet intermediaries for trademark infringement by their users. Both issues have also been addressed in a paper on Governance of international trade and the Internet: Existing and evolving regulatory systems.

Resources

Publications

Internet Governance Acronym Glossary (2015)
An Introduction to Internet Governance (2014)

Papers

Competition in the Software Industry: the Interface between Antitrust and Intellectual Property Law (1999)

Reports

2016 Special 301 Report (2016)
Report of the Director General to the WIPO Assemblies (2015)

GIP event reports

GNSO Review of all Rights Protection Mechanisms (RPMs) in All gTLDs PDP Working Group Face-to-Face Meeting (2017)
ICANN58: GNSO-GAC Facilitated Dialogue on IGO & Red Cross Protections (Session 2) (2017)

 

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