If gaining control of hundreds of Internet domains that resemble your business name at a single stroke sounds like a trademark lawyer's wet dream, you may be surprised to learn that this is just one of the special powers that brand owners have under a little-known ICANN mechanism, the Trademark Clearinghouse. A letter released today by twenty-one law professors and practitioners exposes this and other privileges that ICANN bestows on brand owners, and sounds an urgent note of caution to the ICANN working group that is currently reviewing these special powers.
One of the flaws in ICANN's complex multi-stakeholder structure is the deference paid to private commercial interests. Within ICANN's Generic Names Supporting Organization (which is responsible for developing policy for most Internet domains), there are no fewer than five separate constituency groups representing commercial interests, and only two representing the interests of non-commercial and not-for-profit interests. One of the commercial constituencies is the influential and well-funded Intellectual Property Constituency, which promotes the interests of trademark and copyright holders within ICANN.
Following a sustained lobbying effort, in 2013 the Intellectual Property Constituency won an unprecedented set of new powers for trademark holders as a condition of ICANN's subsequent introduction of hundreds of new top-level domains. Perhaps the worst of these is the Trademark Clearinghouse, a system that gives brand owners special powers to prevent the registration of domain names that contain their trademarks. This veto power applies even in cases where their use in a domain name is not actually a trademark infringement—for example because of the defense of fair use, or because the domain name is in a different category of goods or services to that in which the mark is used, or because the words in the mark are only protected as part a distinctive design.
A particularly egregious example of the abuse of the Trademark Clearinghouse is in the veto power reportedly granted to an English company over the use of the word "The" in ICANN's new domains. (We say "reportedly" because the Trademark Clearinghouse doesn't provide any search function enabling us to verify trademark record registrations; quite a backward leap in transparency when compared with national trademark registries.) The company granted this power doesn't, as far as we could ascertain, operate in the automotive, gambling, health services, or education sectors. And yet it has been able to use the veto powers obtained through the Trademark Clearinghouse to gain priority status to register domains such as the.cars, the.casino, the.doctor, the.school, and the.university—amongst many others.
ICANN's acquiescence to even the most outlandish demands of the trademark lobby has also set a precedent enabling some registries to go even further; for example, the registry Donuts (which we recently exposed as an architect of the copyright-blocking Healthy Domains Initiative) offers a DPML-Plus program that allows brand owners to block registrations not only of their registered marks, but also substrings, misspellings and variants of those marks, across hundreds of domains, for a period of ten years. We are aware of no national trademark system anywhere in the world that provides such extensive privileges to brand owners. Neither is there any convincing reason why the domain industry should be providing them with such privileges.
Today's letter to ICANN exposes this scam and calls upon ICANN to stop being so solicitous to brand owners at the expense of other legitimate users of the domain name system. In particular, we are very clear that ICANN should not extend the Trademark Clearinghouse to top-level domains that it doesn't already cover, such as the most widely used domains .com, .org, and .net. Looking forward, ICANN should also review the failings of the Trademark Clearinghouse system and roll it back from the more than 1,000 domains to which it already applies.