ICANN seeks comment on “closed generic” gTLDs
Following concerns expressed by brand owners, governments and other stakeholders, ICANN has opened for public comment the issue of whether and when applications for new gTLDs that are generic may be “closed”.
A “closed” gTLD is one in which the applicant for it proposes to operate it exclusively for its own benefit – i.e. where registrations by third parties will not be permitted.
Various stakeholders, including Microsoft, have written to ICANN expressing concern that closed generic TLDs are inappropriately exclusive, and will be anti-competitive and limit consumer choice.
ICANN’s call for comment seeks input on two issues:
- how to determine whether a string is “generic”; and
- the criteria for determining if a generic TLD should be “open” or “closed”
The period for comment closes on 7 March 2012.
German court allows Google AdWords keyword advertising
The German Supreme Court has held that keyword advertising does not constitute trademark infringement if the advertising is clearly separated from the search results, reports Klinkert Zindel Partner.
Google not liable for misleading AdWords says Australian High Court
Google has won its High Court challenge against the decision that it is liable for AdWords-generated search results that mislead or deceive consumers.
By a majority, the court ruled that it is the advertiser, not Google, who makes any false representation contained in an AdWords-generated sponsored link.
The Australian consumer watchdog brought an action against Google for engaging in misleading or deceptive conduct when an AdWords-generated sponsored link wrongly represents an association or affiliation between the advertiser and the advertiser’s competitor whose name or trademark was used as the AdWords keyword.
The Federal Court at first instance agreed that such advertisements amounted to misleading or deceptive representations, but found that these representations were made by the advertiser, not Google.
This decision was overturned on appeal by the Full Court of the Federal Court, on the basis that by returning an AdWords sponsored link in response to a search query, Google represents (misleadingly) that there is a connection between the competitor business for which the user is searching and the advertiser.
The High Court disagreed, stating: “It is critical to appreciate that, even with the facility of keyword insertion, the advertiser is the author of the sponsored link.” Accordingly, it could not be said that Google had engaged in misleading or deceptive conduct by showing the links in its search results.
Argentinian court rules on search engine liability
The Argentina Court of Appeals in Civil Matters, Division D, has ruled that unless web search engines have been duly notified about the existence of illicit content indexed by them, they are not liable for the content of third-party websites.
As Obligado & Cia reports, the Court of Appeals overturned a first instance ruling that Google and Yahoo! were liable for the mental distress caused to a singer and model whose name and image appeared on websites containing pornographic content. Users could access these websites by typing the singer’s name into the search field of Google Inc and Yahoo!
According to the Court of Appeals, the civil liability of the web search engines arises only after the injured party has requested the blocking of online content that is considered to be harmful, and such request has been ignored.
In this regard, it is necessary that the injured party acts in good faith, identifying the specific content and location of the material to be blocked. Absence such notification, there is no liability on the search engine.
Google ‘AdWords’ case in the Australian High Court
Google’s appeal to the High Court of Australia against the ruling that its ‘AdWords’ service is misleading and deceptive has been heard, and the transcript published.
The decision has been reserved, with judgment to be delivered in due course.
You can read my post on the decision being appealed here.
Global pharma calls on ICANN to act against online counterfeits
The international pharmaceutical industry has released a policy statement targeting counterfeit medicines on the internet, recommending that ICANN join the fight.
The statement calls on ICANN “to take appropriate actions and ensure accountability measures in order to protect Internet users from illegitimate online sites that are engaged in the illicit sale of prescription medicines”.
IP Watch reports that, at the same time, the Center for Safe Internet Pharmacies was launched in the US, aimed at taking down illegal internet pharmacies.
Brand owners ‘crowdsource’ evaluation of new gTLD applications
A group of brand owners has adopted a crowdsourcing approach to the ICANN public comment process for challenging new top-level domain name applications, BNA reports.
.nz domain name authority proposes opening second level
The New Zealand Domain Name Commission is proposing to extend the .nz domain name space by allowing anybody to register domain names at the ‘second level’.
Key features of the .nz proposals include:
- Registration of .nz domain names could be at the second or third levels on an ongoing basis.
- Existing second level domains (such as .co.nz) will remain and continue to be supported.
- There will be no impact on any currently registered .nz domain names.
- Registrations at the second level will be on a “first come, first served” basis, except during the Sunrise Period and where there are currently multiple registrations of the same name in different second level domains.
- The Sunrise Period will be a designated window, where existing .nz domain name holders (registrants) can register their domain name/s at the second level if they are the only one that has that name at the third level.
- If two or more domain name holders have the same name at the third level, no-one will be able to register that name at the second level unless they obtain the consent of the other third level name holders. Alternatively, if all agree, it could become a second level domain instead.
- A temporary amendment to the Dispute Resolution Service Policy to cover sub-domains of generic domain names registered at the second level.
The Commission has released a consultation paper elaborating its proposals, on which comment is invited before 27 September 2012.
How to dispute a new gTLD application
ICANN announced on 13 June 2012 that it had received 1930 applications in the first round of the new gTLD program. The program includes mechanisms for disputing the grant of a gTLD.
As Mintz Levin neatly summarized, there are four bases for submitting a formal objection:
String Confusion Objection: The applied-for gTLD string is confusingly similar to an existing TLD or to another applied for gTLD string in the same round of applications. Disputes involving string contention objections will be administered by the International Centre for Dispute Resolution (ICDR). Who has standing to raise a string confusion objection? Only an existing operator of a top level domain or another gTLD applicant in the same application round.
Legal Rights Objection: The applied-for gTLD string infringes the existing legal rights of the objector. Disputes involving legal rights objections will be administered by the World Intellectual Property Organization (WIPO). The only parties with standing to raise a legal rights objection are “rightholders” (i.e., trademark owners) and this category is generally considered to be the vehicle by which a party can address trademark infringement claims arising from a new gTLD application.
Limited Public Interest Objection: The applied-for gTLD string is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law. Disputes involving limited public interest objections will be administered by the International Center for Expertise of the International Chamber of Commerce (ICC Center). Anyone can file an objection. ICANN has stated, however, that limited public interest objections (unlike string contention or legal rights objections) are subject to a “quick look” review “designed to filter out frivolous and/or abusive objections.
Community Objection: There is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string may be explicitly or implicitly targeted. Disputes involving community objections will be administered by the ICC Centre subject to the same fees set forth above. Only an “established institution associated with a clearly defined community” has standing to file a community objection.
Google granted leave to appeal ‘AdWords’ case in Australia
The High Court of Australia has granted leave to Google to appeal the decision that found its AdWords sponsored links misled consumers.
The Full Court of the Federal Court previously held that a sponsored link generated by the use of a keyword that is the trademark of another business constitutes a misleading representation by Google that there is a connection between the trademark owner and the advertiser. It also held that “publisher’s defence” to misleading conduct did not apply, because it could not be said that Google did not know, and had no reason to believe, that the sponsored link was misleading.
These findings will be reconsidered by the High Court on appeal.
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