IPC Public Comments - Latin Script Diacritics PDP Initial Report

Introduction

The Intellectual Property Constituency (IPC) appreciates the opportunity to provide input on the Latin Script Diacritics PDP Initial Report (the “Report”). Our primary concern is ensuring that any expansions in the gTLD namespace – including the potential addition of new gTLD strings containing Latin script diacritic characters – include adequate safeguards against consumer confusion and rules that support the protection of Intellectual Property (IP) rights and minimize the enforcement burden on IP rights holders.  In that spirit, the IPC’s comments focus on issues in the Report that are relevant to brand owners and the IPC does not comment on every recommendation or implementation guidance in the Report.

“Same Entity” Principles

The report introduces a mechanism allowing the simultaneous delegation and operation of a base ASCII gTLD and its visually similar Latin script diacritic version, even though they are not “variants” under current rules. This increases the likelihood that highly similar gTLDs (e.g., .brand and .bränd or .generic and .genéric) may co-exist, which could pose challenges for trademark owners seeking to avoid consumer confusion and increase the enforcement burden on brand owners seeking to address infringing domain names across additional new gTLD strings (even in cases of common control of base ASCII and visually similar Latin script diacritic versions of a gTLD). 

In light of the above, the IPC supports recommendations in the Report mandating that all Latin script diacritic variants of a gTLD be under common control of the same operator of the base ASCII gTLD that contains no diacritics (see Report, Preliminary Recommendation 2). This is consistent with other string similarity requirements, and a sensible approach that will mitigate potential string confusion and, by extension, consumer confusion. In a similar vein, the IPC supports recommendations in the Report that an allocatable variant domain name should be reserved for use by the same registrant of the source domain name but not automatically allocated for use across an ASCII/Latin diacritic gTLD set (see Report, Preliminary Recommendation (see Report, Preliminary Recommendation 40).

Rights Protection Mechanisms 

The IPC supports the consistent application of all existing gTLD Rights Protection Mechanisms (e.g. TM-PDDRP etc.) to Latin diacritic variants (see, e.g., Report, Preliminary Recommendations 25 and 50). 

The IPC also supports recommendations in the Report mandating that in cases where a domain is ordered transferred or cancelled pursuant to a UDRP proceeding, all corresponding domains within the ASCII/Latin diacritic gTLD set must also be transferred or cancelled (see Report, Preliminary Recommendation 48). Furthermore, although the Report is silent on this specific issue, the IPC would favor recommendations stating that in cases where a UDRP or a URS covers more than one domain name in the ASCII/Latin diacritic gTLD set, these domains should be considered as a single domain for purposes of calculating UDRP or URS filing fees. Otherwise, this would potentially significantly increase the cost burden on brand owners to address multiple corresponding domains across ASCII/Latin diacritic sets in the context of these dispute resolution mechanisms.

Registration Data Disclosure

The IPC also supports recommendations in the Report mandating that corresponding sponsoring registrars should accept requests for disclosure of non-public registration data and disclose the requested data for all domains in the set, subject to existing disclosure requirements in existing ICANN Consensus Policy on domain name registration data (see Report, Implementation Guidance 52). That said, allocation recommendations already suggest that all allocated domains in a particular set should have the same underlying registrant data (such that the data for one such domain should be the same as all other such domains in the set) so this recommendation/guidance may be redundant or moot.  

.Brand Requirements

The IPC disagrees with the portion of Recommendation 14 that states that an applicant for a .Brand TLD string(s) that constitute(s) an ASCII/Latin diacritic gTLD set be required to submit proof that each label that constitutes the set is identical to registered trademarks owned and used by the gTLD registry operator or its affiliate.  Where the brand owner owns a registered trademark containing a Latin diacritic, it should not be required to own registrations for all variations containing other Latin diacritics or a base ASCII label with no diacritics – it is unreasonable to expect a trademark owner to hold registrations for all such variants of its actual mark, and principles of string confusion and similarity dictate that where a .brand containing a diacritic is delegated to the brand owner, they should also be delegated all ASCII/Latin diacritic variations of the string.  The report seems to mischaracterize trademark law insofar as it states: “Thus, under trademark law, the rights are attached to one, distinct mark limited to an exact match.” On the contrary, trademark rights attach to a particular mark but allow the trademark owner to prevent others from adopting any marks that are likely to cause consumer confusion – which extends to non-exact variations of the mark.  

Otherwise, the IPC supports recommendations in the Report concerning the treatment of .Brand applications, which appear to be consistent with existing Applicant Guidebook rules and procedures. That said, all of the recommendations and guidance in the Report should also be reviewed to ensure overall consistency with String Similarity Evaluation criteria and procedures.

Conclusion

The IPC broadly supports the recommendations and implementation guidance in the Latin Script Diacritics PDP Initial Report. That said, there is some apparent misunderstanding around trademark law principles particularly as it relates to Recommendation 14, which in the IPC’s views must be reevaluated.  Furthermore, the IPC would support additional recommendations or implementation guidance that speaks to the issue of calculating UDRP and URS filing fees as it relates to disputed domain names within an ASCII/Latin diacritic gTLD set. Finally, all of the recommendations and guidance in the Report should also be reviewed to ensure overall consistency with String Similarity Evaluation criteria and procedures.  The IPC appreciates this opportunity to comment on the Latin Script Diacritics PDP Initial Report and looks forward to working with the ICANN community to ensure the Report is updated consistent with the IPC’s input.