ICANN’s trademark clearinghouse guidelines for the introduction of gTLDs have been slammed by one of Australia’s largest domain registrars, Melbourne IT.
Melbourne IT has warned that high profile trademark holders will be vulnerable to attack from cyber squatters and counterfeiters unless policy is swiftly changed.
In a new discussion paper, ‘Minimizing HARM‘, Melbourne IT said that under the current regime brands would be forced to pay hundreds of thousands of dollars, as a defensive measure, to register their trademarks under each new generic gTLD to protect their brand from fraud or consumer confusion.
"In a new gTLD world, organizations will still need to be more proactive in monitoring for online infringements, that is not going to disappear; but what we are asking ICANN for is a stronger process to increase consumer protection by shielding high at-risk names that are regularly abused by cybersquatters, phishers and counterfeiters online. ICANN's current guidelines and initiatives to protect trademark holders do not go far enough," said Melbourne IT CEO and MD, Theo Hnarakis.
The paper suggests a raft of measures to protect HARM (High At-Risk Trademarks) including the creation of a list of HARMs, which will give those brands greater protection and the introduction of ‘sunrise privileges’ which will allow brands to pay a one-off blocking fee to register the name, waiving any on-going renewal fees. It also recommends the implementation of a rapid take down procedure - within 48 hours of a Uniform Rapid Suspension (URS) complaint- unless a Response Fee is paid equivalent to the URS fee paid by the complainant.
The findings from Melbourne IT’s discussion paper will be presented to the ICANN community for consideration at ICANN's Toronto meeting in October. Melbourne IT will also hold a working group summit in Washington D.C. on September 18th to further discuss the proposal and the issues it raises.