ICANN… be independent
On 1 October 2016, there was a major behind-the-scenes change in the internet. Essentially, the control of the Internet Corporation for Assigned Names and Numbers (ICANN), the organisation that coordinates internet addresses and domain names, has been relinquished by the US government. This is seen by many as a significant development in an increasingly global internet.
In a move that had been planned for many years, the US government has allowed its contract to administer ICANN to expire. ICANN now rests in the hands of “multi-stakeholders”, namely business representatives, technical experts, academics, civil society, governments and individual internet end users. The internet is a global resource and it is considered logical for ICANN to be accountable to these stakeholders, being the global community that it serves.
What does ICANN do?
Since its formation in 1998, ICANN has played an important role in the internet environment. It is a not-for-profit organisation that describes itself as being responsible for keeping the internet secure and stable.1 Its duties include managing and developing policy on the internet’s unique identifiers. These identifiers are series of numbers enabling computers to recognise each other. ICANN has developed a way of making these numbers more easily accessible for humans by matching them to letters, resulting in “domain names”. This is how we can locate ICANN’s website at “icann.org” rather than “184.108.40.206”. It is of course this function of ICANN that is of particular significance to domain name owners since many of them are also brand owners who will be keenly registering domain names or guarding against identifiers that match their trade marks.
Over 2016, we have seen an explosion in domain names from the original group of 22 (such as .com, .net, .org) to well over 1,000 (including .shop, .ltd, .games). It is not surprising from the volume of Top-level Domains (TLDs) now available that ICANN is very lucrative, with reported revenue in 2015 of almost $220m.2
However, the role of ICANN is much greater than administering domain names – through its coordinating role in the internet’s naming system and how it defines related policies, ICANN can influence how the internet expands and evolves. We can see this in action in how it has created space for more domain names and policies on dispute
resolution. ICANN has taken steps to incorporate various mechanisms for protecting the rights of trade mark owners in both respects.
“One real concern is that the ‘multi-stakeholder’ community can be irresolute due to its disparity.”
According to figures released by ICANN, it opened the domain name market to competition which resulted in a “lowering of domain name costs by 80% and saved consumers and businesses over US$1bn annually in domain registration fees”. Many brand owners would take a different view of this because although they could now acquire more
domain names under new TLD codes, the risk of a competitor beating them to it resulted in increased policing costs as well as costs associated with grabbing relevant domain names themselves before a third party registered them.
Although not a stranger to criticism and controversy, ICANN sparked major fury among trade mark owners when it decided to introduce over 1,000 new generic Top-Level Domains (gTLDs) in 2011. A group organised by the US-based Association of National Advertisers, called the Coalition for Responsible Internet Domain Oversight (CRIDO),
opposed the rollout of ICANN’s TLD expansion programme on the basis that it would “unduly burden a diverse range of public and private brand holders, as they would be forced to spend ever-greater amounts of time and resources simply to protect their brands”. Among the organisations and corporations that joined CRIDO and put their names
to a petition sent to the secretary to the US Department of Commerce were heavyweights such as Burger King Corporation, The Coca-Cola Company, Ford Motor Company, Johnson & Johnson, Procter & Gamble, Kellogg Company and Nestle US.3 CRIDO’s impressive membership list currently stands at 102 associations and 79 companies from around the world.4
In response to this criticism, ICANN increased its efforts to implement a protection mechanism for trade marks in domain name registrations. This culminated in the formation of the Trade Mark Clearinghouse.
Trade Mark Clearinghouse
This is a centrally-held database of registered trade marks that have been authenticated with evidence prior to entry. The data that is deposited with the Trade Mark Clearinghouse can be used to support trade mark owners in making their own domain name applications as well as lodging challenges to third party applications. As the evidence of the rights has already been provided, a decision on an action based on rights lodged with the Trade Mark Clearinghouse can be made relatively quickly.
The World Intellectual Property Organization (WIPO) resolves domain name challenges that are based on trade mark rights under either the URS or UDRP procedure. Both procedures were established by ICANN specifically to address the worries of trade mark holders and have evolved to create large bodies of case-law.
Uniform rapid suspension system (URS)
This is intended to provide rapid relief to trade mark holders in clear-cut cases of trade mark abuse involving the new gTLDs and to be a more cost-effective alternative to the UDRP.
Uniform domain name dispute resolution policy (UDRP)
This is intended to be a quicker and more cost-effective alternative to litigation and according to the cases filed with WIPO, remains a more popular option than the URS.
There was some concern that once the US gave up control of ICANN, authoritarian governments would be able to exercise control over content and implement censorship on a global level, thereby over-riding the principle of freedom of speech on the internet. However, as ICANN is not itself a regulator of content, the move from the US
Perhap one real concern is that the “multi-stakeholder” community can be irresolute due to its disparity. The various parties involved (from governments to businesses) each have their own interests and priorities. They are also arguably less likely to take a position on matters that do not directly affect them. Of course, this is much like a voter in a democracy –they have the option to get involved if they want to influence a decision and also the freedom to abstain should they wish to do so. In summary, it seems that the transition into stakeholder control is a positive move towards inclusivity and might also avoid (or at least delay) the internet becoming fragmented by the introduction of competing systems. ICANN might not be perfect but it is on the road away from the influence of a single country and towards answerability to its users.
“It is likely that we will see a revisitation to the policies for the protection of trade mark rights under the new ICANN regime.”
What will we see?
Internet users will see no real change as a result of the transition. Almost certainly, the stakeholder-led model will have implications for any future rounds of gTLDs, the next of which could be rolled out as soon as 2018. According to WIPO, ICANN is currently managing a process to allow for the possible registration of two-character domain names at the second level in new gTLDs. Representations from the various interested parties will likely be a prerequisite and given the many types of stakeholder, this is likely to result in major delays for decision making. It remains to be seen how proactive the stakeholder community will be in seeking additional protection for brand owners in the event of expanded domain name space, but since many big businesses are both brand owners and stakeholders, their voices may be even louder. It is therefore likely that we will see a revisit of the policies for the protection of trade mark rights under the new ICANN regime.
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