Melbourne IT Urges ICANN to Consider Stricter Protections to Minimize Consumer and Business Harm in New gTLDs

Melbourne IT today called on ICANN to provide greater consumer protection to reduce the risk of public confusion or fraud in new generic Top Level Domains (gTLDs) by strengthening safeguards for the use of well-known names at the second level before more than 1,000 new gTLDs are introduced on to the Internet beginning in 2013.

Melbourne IT supports more than 3,800 well-known organizations around the world with digital brand management services. The company has released a Community Discussion Paper, entitled ‘Minimizing HARM‘, which outlines a policy alternative whereby organizations with ‘High At-Risk Marks’ should be afforded greater protections at the second level (ie. names to the left of the dot), which ICANN could adopt to boost consumer protection. Melbourne IT has invited concerned organizations to help support and develop the proposal further.

Melbourne IT CEO & Managing Director, Theo Hnarakis, said organizations were rightly concerned by the heightened potential for misuse of their names to defraud consumers in the many new proposed gTLDs with open registration policies similar to .com.

“Well-known distinctive names have acted as a reliable signpost for consumers for centuries – they allow consumers to quickly identify the organization they are interacting with and carry implied trust or distrust based on those interactions. Trademark law was established to protect the use of these distinctive names. Domain name misuse abuses that consumer trust and the potential for misuse of well-known distinctive names among new gTLDs at the second level is significant. Affording greater protections to well-known names in new gTLDs will allow ICANN to provide greater protection to consumers online as well as helping organizations defend their reputations online,” Mr Hnarakis said.

“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,” he said.

“The Community Discussion Paper that Melbourne IT has developed aims to form the basis for a strong, credible, and balanced policy document developed by the community to put to the ICANN community for consideration at ICANN’s Toronto meeting in October. I encourage all concerned businesses, governments, non-profit organizations, and consumer -interest groups to join us in developing this policy into a compelling solution for what is likely to be a significant problem for consumers online.”

Melbourne IT will hold a working group summit in Washington D.C. on Tuesday, September 18th to further discuss the proposal and the issues it raises. Event details, including guest speakers and timings, will be announced shortly.

To summarize, Minimizing HARM proposes:

A list of ‘High At-Risk’ Trademarks

• The creation of a list of ‘High At-Risk Marks’, or HARMs, that is based on a robust and credible scoring system to determine which brands qualify as a HARM and therefore are afforded greater protections

Sunrise Privileges

• HARMs may be protected through defensive registration during new gTLD Sunrise phases where the trademark owner can pay a one-off blocking fee to register the name, with no on-going renewal fee and the domain name not resolving (a process successfully used during ICM Registry’s .xxx Sunrise B process)

Stronger registration requirements

• New gTLD registries must validate at least two contact details (amongst Phone number, email address, or postal address) of registrants that register a name that matches a HARM
• Registrants must warrant that their use of the mark will not infringe
• Provisions for trademark claims, which are currently restricted to 60 days, be extended to an ongoing basis for HARMs

Stronger suspension and recovery rules

• Upon registration of a name that matches a HARM, the trademark owner is immediately notified
• The domain name can be suspended with 48 hours’ notice by the trademark owner of domain name misuse
• Registrant can pay a bond (equal to URS fee paid by complainant) to have the name reinstated while a URS process is underway
• Registrant will lose the bond if the registrant loses the dispute. The Trademark owner will receive a refund of their fee from the dispute provider if they are successful. If the Registrant is successful, the bond is refunded. This is similar to the equal payment rules for the Legal Rights Objection process at the top level.

A key distinction in this proposal is to balance the costs for registrants and owners of High At-Risk Marks in the dispute resolution process, and ensure appropriate accountability by the registrant for their actions.

Melbourne IT invites all concerned organizations wishing to support this proposal and participate in its development to contact Tony Smith at Melbourne IT via email: [e-mail].

About Melbourne IT

Melbourne IT (ASX: MLB) helps organizations of all sizes to successfully conduct business online. Our complete portfolio of Internet-based technology services drives business effectiveness and profitability for more than 350,000 customers around the world.

The breadth of Melbourne IT’s offering extends from helping small businesses build an online presence through to managing the complex technology environments of large enterprises and governments – including Internet domain name services, web hosting, online brand protection and promotion, managed IT services and more.

Melbourne IT’s culture of integrity, innovation, collaboration and customer centricity has been built by more than 700 employees spread across 18 offices in 10 countries. For more information, visit www.melbourneit.info.