IP changes in detail (Draft Applicant Guidebook version 5)

Here is a breakdown of changes made to the fifth version of the Applicant Guidebook for new Internet extensions as it relates to intellectual property issues.

Trademark Clearinghouse

Changes to the Trademark Clearinghouse (TC) include:

• Elimination of the distinction between marks which have been reviewed on substantive or relative grounds (p2), leveling the playing field for IPR holders from every country.
• The cut off date (26 June 2008) before which marks had to be registered, has also been eliminated (p4, 3.2.3).
• All types of intellectual property may be included in the TC, not just trademarks (3.6 and 3.2.4, p 4), but not applications for registrations, marks subject to opposition or invalidation etc (3.2.5, p4)
• Use requirements have been reduced for court-validated marks (from “continuous use” to a single example of use). This makes it easier for IPR holders to benefit from the protection of the TC
• The limitation of the TC to “identical marks” has been deleted (6.5), raising the possibility that some providers of TC services may go beyond identicality to confusing similarity
• There is a contradiction in the text. Data authentication and validation (para 5) requires evidence of use under the TC. However, this is not reflected in 7.1 which states “no demonstration of use is required.”

Uniform Rapid Suspension System (URS)

Changes include:

• The original word limit for the complaint (5,000 excluding attachments) has been reduced to a simple form, with 500 words free text (URS 1.2)
• As in the Trademark Clearing house, marks no longer have to have had substantive evaluation, making the URS available to a wider range of IPR (URS 1.2.6.1)
• The relevant time for rights to be shown is at the time of the URS complaint (URS 1.2.6.1)
• Word limit for response has been reduced from 5,000 to 2,500 (excluding attachments)
• A limited “loser pays” mechanism has been introduced, for cases involving 26 or more domains, which will be subject to a response fee (refundable to the prevailing party – URS 2.2)
• The time period in which a defaulting respondent may request a review of a URS decision has been reduced from 2 years to 6 months (URS 6.4). Respondents who “wake up” within 6 months, may extend the time for responding by an additional 6 months (6.4), and there is no requirement for exceptional circumstances or other rationale for granting or refusing such an extension, making it likely that it will always be invoked and granted
• Examiners no longer have to consider whether “a defense would have been possible” in default cases, which the GAC commented would give unjustified privilege to non-cooperating respondents (URS 8.4), making it easier for brand owners to succeed in default URS cases
• On appeal, appellants must identify the specific grounds for appealing (URS 12.1)
• Bad faith on the part of the registrant also remains a requirement
• The burden of proof continues to be the higher standard “clear and convincing evidence” – which will make it more difficult for complainants to succeed

Trademark post-delegation dispute resolution procedure (Trademark PDDRP)

Fewer changes have been made to the PDDRP, reflecting that the Board disagreed with the majority of the GAC’s comments on this process. Changes include:

• The standard to be achieved by the complainant has been slightly reduced by removing the words “unjustifiably” and “an impermissible” from the factors at PDDRP 6.1
• Requirements to show use on the part of the complainant have been reduced to “one specimen of current use” in line with the URS and TC requirements
• ICANN has clarified that the remedies are within its own discretion – given that each registry will be in a 1:1 contractual relationship with ICANN. This is sensible

Registry restrictions dispute resolution procedure (RRDRP)

• The text is amended to clarify that the RRDRP is an escalated complaints process, only available once a Registry Restriction Problem Report System (RRPRS) has been tried and failed (RRDRP, 5.3)
• A limited loser pays mechanism is introduced, using the same concept as the URS. Registries will have to pay a response fee, which is reimbursed to the prevailing party (RRDRP 13)
• The section on remedies has been substantially simplified (RRDRP 20). Because of the contractual relationship between registries and ICANN, the contract should be the only route for determining remedy, to avoid complexity and potentially incompatible provisions between the RRDRP and the contract