Dreyfus

As the advertising sales agency of Bing and Yahoo!Search, the two most used search engines after Google, Microsoft Advertising announced the liberalization of its keyword registration policy. Starting March 3, 2011, registering trademarks as keywords is now possible within the framework of advertisement campaigns displayed on the Bing and Yahoo!Search search engines.

Bringing its trademark protection policy in line with Google’s, Microsoft will only act upon receiving a trademark owner’s complaint and after having conducted an inquiry on the litigious ad. In the presence of a litigious ad, Microsoft suggests that trademark owners first contact the advertiser and specifies that the following ads will be authorized:

–          Use of the trademark by resellers of authentic goods or services,

–          Information websites on the trademark (for example for product reviews),

–          Generic terms,

–          Comparative advertising by independent operators (for example price comparison websites)

This policy applies starting March 3, 2011 in the United States and Canada only.

Specific conditions, which are more or less protective of trademark rights apply in France, the United Kingdom and Singapore.

This general trend thus places new responsibilities on trademark owners. Indeed, the new policies impose the introduction of monitoring tools on all search engines while taking into account the principles of geolocation of ad campaigns. A trademark defense strategy should also be put in place on search engines, while taking into account case law developments within the ECJ and national courts on the subject.

The Brussels ICANN Board and Government Advisory Committee (GAC) meeting, scheduled to be an unprecedented consultation on trademark protection and new gTLDs, did not have the success hoped for.

Firstly, not only was the Board unable to make its way to preliminary responses for all of the twelve categories of items listed in the GAC’s scorecard distilling the key elements of consensus advice regarding the introduction of new gTLDs (see previous article on the Cartagena conference for a list of these categories of items), but according to the Board, its response to the first four issues should not be assumed to be its final positions.

Secondly, after a brief and unsuccessful discussion on trademark owner rights protections, the entire subject was simply taken off the table; indeed, it was decided that the GAC and the Board would hold conference calls over the rest of the week and dig back into the subject at the Board’s GAC consultation scheduled for March 17 in San Francisco.

The Board did, however, reveal some of the proposed changes it will make with respect to right protections, based on the GAC’s recommendations.

As to the Trademark Clearinghouse, the Board accepted to change the requirement that trademarks be substantially reviewed to gain automatic entry to the Clearinghouse; all registrations will be included with the additional requirement that the mark holder be able to show use. As to the GAC’s wish to keep the Clearinghouse open after the launch, the Board was not keen on the idea but expressed its intention to explore mechanisms for continued notice service.

Concerning the Uniform Rapid Suspension (URS) procedure, the Board stated that efforts were under way to increase the speed of the process and that such efforts would be dependent on the scheduled conference calls and accepted to reduce the word limit for filings (from 5,000 word free text and unlimited attachments to 500 word free text and attachments limited to copies of the offending website). It also accepted that successful complainants have the option of taking ownership of the domain rather than having the domain name released back into the market. The Board however refused to introduce, at this stage, a loser-pays process, but agreed to provide for careful monitoring.

Finally, as to the Post-delegation dispute mechanism, through which trademark owners can proceed against registry operators acting in bad faith, with the intent to profit from the systematic registration of infringing domain names, the Board resisted to the GAC’s recommendation that a lower standard of proof be applied (from “clear and convincing evidence” to “preponderance of evidence”). It also disagreed with the suggestion that should a registry be found to encourage cybersquatting, transfer of all the domain names in question should be part of the remedies sought.

Further developments in March 2011; however, the gTLD application launch date seems further delayed. To be continued …

The Trophées du Droit* rewarded Dreyfus & associés for its dynanism, its performance and its growth as a 2011 rising specialized team.

*A key event of the French legal world, the Trophées du Droit aims at paying tribute to the most outstanding legal specialists (http://www.tropheesdudroit.fr/).

Friday December 10, 2010 marked the end of ICANN’s most recent five-day conference in Cartagena, where the Internet regulatory body devised plans to let groups apply for and manage new Internet domain extensions called generic Top Level Domains (gTLDs), thereby allowing for the creation of any TLD with up to 64 characters, including regional suffixes, generic words and brand names. The creation of these new gTLDs will enable large brand owners with sufficient funds to become TLD registries.

According to ICANN’s Adopted Board Resolution of December 10, 2010, public comments following the publication of the fifth Draft Applicant Guidebook (DAG) identified four “overarching issues” to be addressed as a threshold for moving forward with the introduction of new gTLDs: trademark protection, mitigating malicious conduct, root zone scaling and economic analysis. As noted by ICANN, these four issues have been addressed during the Cartagena Board meeting. However, since the public comment period closed on December 10, the last day of the conference, comments will have to be digested within the next month. As ICANN Board chairman Peter Dengate Thrush puts it with respect to IP protection mechanisms, “we don’t think [we need] to start another campaign like the IRT[1] and try to develop another set of mechanisms. However, in relation to the mechanisms we have got the door still open”[2] (emphasis made by the author).

However, since more time is needed to work through some remaining issues such as certain aspects of geographic gTLDs and other gTLDs that raise morality and public order issues, ICANN decided to postpone the new gTLD process.  Meanwhile, the Governmental Advisory Committee (GAC), composed of representatives from more than 100 governments worldwide, accepted the ICANN Board’s invitation to meet intersessionally in February 2011, before the March 13-18 San Francisco ICANN meeting, in the interest of resolving the outstanding issues with the new gTLD process. Indeed, the GAC remains very concerned that many of the original public policy issues raised remain unresolved in the latest version of the DAG[3]. It notably noted the absence of a detailed explanation and rationale for the decisions taken to date on the new gTLD program, exemplified by the recent Board decision on vertical integration.

In light of the February meeting, the GAC intends to provide the Board with a list of the issues which it feels are still outstanding and require additional discussion; these include:

–          The objection procedures including the requirements for governments to pay fees;

–          Procedures for review of sensitive things;

–          Root Zone Scaling;

–          Market and Economic Impacts;

–          Registry – Registrar Separation;

–          Protection of Rights Owners and consumer protection issues;

–          Post-delegation disputes with governments;

–          Use and protection of geographical names;

–          Legal recourse for applicants;

–          Providing opportunities for all stakeholders including those from developing countries;

–          Law enforcement due diligence recommendations to amend the Registrar Accreditation Agreement; and

–          The need for an early warning to applicants whether a proposed string would be considered controversial or to raise sensitivities (including geographical names).

In light of such a lengthy and diverse list, we can note that despite what some might think after reading ICANN’s Adopted Board Resolutions, the “overarching” gTLD issues are not closed; they have only been “addressed”, as expressed in the Resolutions. The terminology used was clearly carefully chosen.

This newly scheduled February consultation will further delay the rollout of gTLDs, initially planned for early 2011. Therefore, to the question “will there finally be new gTLD approval in San Francisco?”  Peter Dengate Thrush can only answer “We hope that we can work through remaining issues. There is always an incentive on people on whom this might be costly, or enjoy the privilege of incumbency – change always hurt someone. The sort of analogy we use is if you were to now ask the telcos should we introduce the internet, what would they say?” [4]

Further developments in February 2011; however, the May 30, 2011 application launch date announced by ICANN in October already seems to be compromised. To be continued …

[1] Implementation Recommendation Team (IRT): special task force broadly reflecting diverse IP interests and geography given the mandate to address what it considers to be the most pressing and key issues for trademark owners in relation to the launch of new gTLDs.

[2] Full interview : Peter Dengate Thrush, Managing Intellectual Property, December 13, 2010.

[3] GAC Communiqué – Cartagena, December 9, 2010.

[4] Full interview : Peter Dengate Thrush, Managing Intellectual Property, December 13, 2010.