SIIA: More trademark protections needed in ICANN gTLD program

The trade group calls on ICANN to make changes to the program as problems show up in applications

As the Internet Corporation for Assigned Names and Numbers moves forward, despite ongoing concerns, with its decision to launch a program to sell new generic top-level domains, the organization should take new steps to protect trademarks and other intellectual property, a U.S. software trade group said Thursday.

ICANN should react to problems it sees developing as applications come in for new gTLDs, said the Software and Information Industry Association (SIIA), a trade group that has questioned the need for a new gTLD program.

ICANN needs to make "an adjustment" if it sees trademark and other problems during the three-month application period for new gTLDs, said Scott Bain, SIAA's chief litigation counsel. "Once you see specific applications coming in, you're going to have a specific idea of where the problem areas are, and where the potential abuse might be."

ICANN launched the new gTLD program late Wednesday EST, even with several groups saying the organization has not done enough to protect trademarks in what could be an addition of several hundred new TLDs. The new program will allow new TLDs such as .hotel or .bank, as well as gTLDs in non-Latin characters, in addition to the current 18 gTLDs, such as .com and .info.

Trademark owners have worried that they will have to defensively register hundreds or thousands of new domain names using their trademarks, with potentially hundreds of new gTLDs coming online. "Ideally, this shouldn't have gone forward in the first place," Bain said, adding that now that the gTLD program is in place, ICANN can make adjustments that help ease concerns.

After the gTLD application deadline in mid-April, ICANN will publish the list of applications and open a 60-day comment period. That public comment period needs to be "meaningful," with ICANN open to making changes to the gTLD program based on comments, Bain said. In some past ICANN programs, comment periods ended "shortly before deadlines for action by ICANN," he said.

In addition, SIIA called on ICANN to look for new ways to protect copyright owners when they see subdomains -- for example, www.mp3s.music or www.cheap.software -- used to infringe intellectual property.

"We're going to want some mechanisms in place to ensure it's not abused," Bain said. "When you have a gTLD that is obviously directed at a particular industry or category, there should be some assurance that it's going to be used only for licensed or authorized purposes."

ICANN also needs to ramp up its staffing to investigate and respond to complaints of trademark and other abuse in the new TLDs, Bain said. The organization has a small staff that now investigates problems with TLDs, and the problems are likely to grow significantly with the introduction of hundreds of new TLDs, he said.

An ICANN spokesman didn't immediately respond to a request for comments on the SIIA recommendations, but ICANN officials in recent days have said the organization has put several trademark protections in place, including a global clearinghouse that allows trademark owners to alert ICANN and domain applicants of their intellectual property. For the first time, ICANN has also reserved the right to take back TLDs from owners who aren't operating the domains in the public interest, ICANN officials have said.

Grant Gross covers technology and telecom policy in the U.S. government for The IDG News Service. Follow Grant on Twitter at GrantGross. Grant's e-mail address is grant_gross@idg.com.

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