Friday, October 1, 2010

ICANN Board Says NO to the GPML

Along with the URS, the IRT’s Final Report also recommended the adoption of rights protection mechanisms (RPMs) such as the IP Clearinghouse, later renamed the Trademark Clearinghouse, which included the Globally Protected Marks List (GPML) as a “tapestry of solutions” for protecting the rights of trademark owners.

To qualify for the GPML, a trademark owner would be required to submit evidence to the Trademark Clearinghouse showing ownership of trademark registrations in a certain number of countries across all five ICANN regions, including North America, Europe, Africa, Asia/Australia/Pacific and Latin America/Caribbean. The IRT refrained from specifying the exact number of required registrations and instead requested that ICANN staff to collect “relevant trademark registration data.” The IRT did emphasize that the registration thresholds “must be sufficiently high such that the marks that qualify for the GPML are actually recognized as globally protected.”

A trademark owner that registers its trademark on the GPML would benefit by, at least initially, blocking the registration of both top-level domains and second-level domains identical to the trademark by third parties. Such prevention of registration would be a boon to trademark owners that qualify for the GPML because those trademark owners would not need to register defensively in any of the new TLDs.

Unfortunately, the GPML never gained traction and was not included in volume four of the DAG. Moreover, in the Board resolutions referenced yesterday, the reasons for the exclusion of the GPML were listed as follows: “it is difficult to develop objective global standards for determining which marks would be included on such a GPML, such a list arguably would create new rights not based in law for those trademark holders, and it would create only marginal benefits because it would apply only to a small number of names and only for identical matches of those names.”

The first listed reason is understandable, as creating criteria all relevant parties agree to would be nigh impossible. The third listed reason is debatable. I have no doubt that trademark owners owning globally recognized brands would certainly not view the benefits of not having to register defensively in a slough of new TLDs as “marginal.” The second listed reason is the one I have heard the most frequently, as there appeared to be a concern that the RPMs would create new rights for trademark owners. And I wonder if the GPML didn’t suffer from its name signifying that trademarks on such a list would be protected globally. If the GPML would have instead been called the Names Overwhelmed by Squatters List or NOs List (As in, “Can I register this?” “I’m sorry that name is on the NOs List.” Clever?), would the outcome have been different? Who knows, but I think it’s safe to say the GPML is dead. We’ll move on to the remainder of the Trademark Clearinghouse next week.

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