ICANN’s Implementation Recommendation Team (IRT) has published its final proposals on ICANN’s plan to open up the internet to an unlimited number of generic top-level domains (gTLDs).

As you know, this new gTLD process (over 500 new gTLDs are expected from early 2010 against ~20 active now!) suggests promising commercial opportunities but also gives rise to worries, particularly among IP Rights holders.

Indeed, Trademark owners do question  ICANN about the supplementary financial burden that the protection of their rights on the Internet will induce when it will theoretically be possible to register any given domain name like: www [dot] my_registered_trademark [dot] endless_new_gTLDs
Attentive to these expressions of concern, ICANN has formed a group of 18 legal and domain specialists, the IRT. The task of this group was to draft proposals to facilitate and improve the protection of trademark holders during this process.

To summarize, the final recommendations of the IRT include:

• The creation of an IP Clearinghouse: a centralized database of verified IP rights to simplify and automate trademark protection. (Quite an interesting idea but unfortunately not mandatory for new gTLD applicants. We will take a further look at it in a forthcoming post ).

• To limit the possibility of systemic abuses by malicious registry operators :

• A set of standardized, minimum protection measures compulsory to all new gTLD registries. (Sunrise rules and Sunrise Dispute resolution policies)
• A requirement for all new gTLD Registry applicants to describe in detail at the time of application the Rights Protection Mechanisms they will be offering
• The opportunity for a third party to file a complaint with ICANN if a new gTLD operator is breaking its registry agreement with ICANN resulting in the loss of the gTLD delegation.

• A faster and cheaper dispute resolution procedure for obvious infringement cases only: the Uniform Rapid Suspension system (URS). Interestingly, this sounds    familiar to the French IP community, since it has a taste as well as a look and feel of our PREDEC.

• An obligation on all new gTLD operators to provide registry-level WHOIS information to facilitate prosecution. (THICK WHOIS).

• A revision of ICANN’s proposed string confusion algorithm (1) to reflect an approach more in line with trademark law principles.

While that approach may appear to be comprehensive, the IRT itself acknowledges that even if all of the above proposed solutions are taken together, they do not represent a panacea to the problem of trade mark protection in the new gTLDs.

A public comment period is now open (until 29 June).  You don’t need to be a registrar to give your opinion and (counter) proposals to these recommendations.

Inasmuch as we are concerned, we will provide you with further comments on this important topic in another post, to follow.

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[1] As new top-level domains will be added to the familiar .com, .info, and .net, the algorithm will check whether the newly proposed name is confusingly similar to existing ones by looking for visual likenesses in its appearance. The algorithm compares a proposed gTLD with other gTLDs and generates a score based on their visual similarities. For example, the domain .C0M scores an 88 percent visual similarity with the familiar .COM. The resulting scores may help indicate whether the newly proposed domain name looks too much like existing ones.

To make its assessments, the algorithm rates the degree of similarity between pairs of alpha-numeric characters. Some pairs, such as the numeral “1″ and its dead-ringer, the lowercase letter “l,” are assigned the highest scores for visual similarity while other pairs, such as “h” and “n”, are given lower scores. The algorithm takes other considerations into account, for example how certain pairs of letters, like “c” and “l,” can join to look like a third letter (”d”), as in the case of “close” and “dose.” Employing these scores and considerations, the algorithm computes the “cost” of transforming one string of characters into another, such as “opel” into “apple.” Lower cost means higher visual similarity. The algorithm then adjusts for the relative lengths of the two strings (different lengths increase their distinctiveness) and converts the final cost into a percent similarity.

Source: ICANN Press Releases - Chief Editor - DomainNews - May 14th, 2008

Alexandre TESSONNEAU / Sylvain HIRSCH