Continued From Page 15
tions for defensive purposes and
incur expenses to monitor a significantly increased number of
In response to brand owners’
concerns, ICANN set up an
Implementation Recommendation Team (IRT) to develop
solutions. The IRT identified five proposals to address
ICANN posted a Proposed
Final Applicant Guidebook
(DAG4) last November which
took into account the IRT report
as well as the comments of hundreds of interested stakeholders.
There was a flurry of objections
by brand owners and others over
the process and substance of the
new g TLD program.
ICANN’s actions were criticized as a drive toward conclusion without meaningful
dialogue or a thorough and
reasoned explanation of decisions taken, and for failing to
adequately resolve key overreaching issues.
The Government Advis-
ory Committee (GAC), which
is made up of representatives
of more than 100 governments
and is intended to give govern-
ments from around the world
a voice in ICANN’s multi-
stakeholder community, made
it clear to the ICANN’s board
of directors that some issues
needed resolution before the
launch of new gTLDs.
How to cope
In broad terms, brand owners
can start the process of securing
their new g TLD or find a way to
deal with third party applications for new g TLDs.
Many parties are said to
be interested in securing new
gTLDs such as .brand, .car,
.health and so on. One source
has suggested at least 115 proposals would be presented this
year. But the costs are high.
The ICANN evaluation fee is
US$185,000, which must be
paid before the process begins.
However, these fees are just the
tip of the iceberg and the real
costs may be in the millions.
“The ICANN evaluation
fee is US$185,000,
which must be paid
before the process
these fees are just the
tip of the iceberg...
An alternative strategy is to
monitor the actions of third parties as they seek to obtain new
g TLDs. ICANN will post all applications considered complete and
ready for evaluation as soon as
practicable after the close of the
application submission period.
An objection may be based
on any one of four grounds,
including a legal rights objection asserting that the applied-for gTLD string infringes the
existing legal rights of the
objector. Where formal objections are filed and filing fees
paid during the objection filing period, a dispute resolution
process applies. An independent
dispute resolution service provider will initiate and conclude
proceedings based on the objections received.
In addition, defensive registrations at the second level may
also be possible. For example, if
the .car gTLD was obtained, it
may be possible to secure edsel.
car or the like. A brand owner’s
rights are protected to a degree
since the registry operator of the
new g TLD must implement, at a
minimum, either a sunrise period or a trademark claims service during the start-up phases
for registration in the gTLD.
These mechanisms will be supported by the establishment of a
trademark clearinghouse which
is intended to provide a listing
of valid trademarks. The sunrise period allows eligible rights
holders an early opportunity to
register names in the g TLD.
If these procedures do not
work, a separate dispute resolu-
tion known as the uniform rapid
suspension system (URSS) is
available to brand owners. The
proposal for the URSS resulted
from the perceived need for a
rapid take-down process for
egregious and clear-cut infrin-
ging domains which would sup-
plement the existing Uniform
Domain Name Dispute Reso-
lution Policy (UDRP) system.
Unfortunately, the URSS only
provides for suspension as a rem-
edy, and resort must be made to
the UDRP procedure to obtain
cancellation or transfer of the
impugned domain name.
John McKeown focuses on providing advocacy and advice concerning intellectual property and
related matters, including protecting trade-marks, copyrights,
patents, confidential information and misleading advertising
and claims under the
Competition Act. He is certified by the
Law Society of Upper Canada as
a specialist in Intellectual Property Law (Trade Marks/Copy-right), and is the author of Brand
Management in Canadian Law.
Five big oilsands producers have teamed up to share ideas
Continued From Page 15
says that until five years ago a
lot of people in the oil patch saw
patents mainly as a means to
“pad the appearance of their
start-up company,” and hoped
that they wouldn’t have to litigate because of the cost.
“People are looking now for
patents to protect them, and if
they have to litigate they recognize this is something they have
to do,” Goodwin says.
The oilsands sector has seen
a dramatic increase in R&D.
Until recently, the extraction of
bitumen has been done mainly
through mining techniques that
haven’t changed for decades.
But there is growing political
pressure to clean up huge tail-
ings ponds and reduce the
amount of energy used in
recovering bitumen. Much of
the expected expansion involves
piping steam and solvents into
the ground — recovery methods
known as “in-situ” — from areas
that are too deep to strip-mine
and require a lot of energy to
extract. Millions of dollars are
being poured into research to
reduce energy consumption.
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