New gTLDs: Best Practices for Protecting Your · PDF fileNEW gTLDs: BEST PRACTICES FOR...
Transcript of New gTLDs: Best Practices for Protecting Your · PDF fileNEW gTLDs: BEST PRACTICES FOR...
TODAY’S SPEAKERS
J. Scott Evans
Head of Global Brand,
Domains & Copyright
Yahoo!
Elisa Cooper
Director of
Product Marketing
MarkMonitor
Ronda Majure, Moderator
VP, Business Segment
Sales, Trademarks
Thomson Reuters
Judith L. Harris
Partner
Reed Smith
TRADEMARK CLEARINGHOUSE BASICS
Purpose – central repository for information to be authenticated, stored, and
disseminated pertaining to rights of trademark holders
Addresses marks eligible for Trademark Claims and Sunrise services – both
mandatory for all new gTLD registries
Will operate separately from ICANN – Deloitte to perform authentication
functions and IBM to perform technical database functions
Costs borne by registries (setup fee of $7,000 to $10,000) and trademark
owners (filing fee generally about $150 per mark per year, plus service
provider submission fees of $500+)
TRADEMARK CLEARINGHOUSE BASICS
Standards for inclusion:
Nationally or multi-nationally registered word marks from all jurisdictions
(substantive review required for Sunrise services)
Any word mark validated through court of law or other judicial proceeding
Word marks protected by statute or treaty currently in effect or in effect on
or before June 26, 2008
Does not include any common law rights other than the above
TRADEMARK CLEARINGHOUSE BASICS
Registrations available for 1- 3- and 5-year terms
Includes ten domain name matches for marks with spaces, hyphens, and
other special characters (e.g., “&” and “@”)
Permitted up to 50 “previously abused names” for Claims Service
Verification began March 23, 2013
BE SMART. BE PREPARED.
Evaluate & rethink your existing domain holdings and brand
protection strategy
Consider new gTLDs and their implication to your brand: threat,
opportunity or neutral
Cooperate, budget and communicate with others in your organization
to meet your goals
PRE-LAUNCH PLANNING
Evaluate portfolio to set divestment, investment & enforcement priorities
Review enforcement mechanisms
Adapt existing enforcement strategies to encompass new gTLD space
Review list of new gTLDs and Plan for participation in Trademark
Clearinghouse and select Sunrises
Remain apprised of updates to the program timeline
POST-LAUNCH
Continue adapting domain name enforcement strategy to include
new gTLDs as launched
Acquire and register desired second-level domains in third-party
new gTLDs
Disable or recover infringing domain names through URS or
UDRP proceedings, or ACPA if necessary
Monitor ICANN developments or partner with ICANN specialist to
assist with education, training and strategic planning.
POST-DELEGATION DISPUTE RESOLUTION PROCEDURES (“PDDRPS”)
As the number of gTLDs expands, so too will opportunities
for cyber-mischief
Once new gTLDs become operational, you will have to become even more
vigilant to protect your Company’s IP
ICANN has developed five post delegation dispute resolution procedures
(“PDDRPs”) to help you deal with the different types of problems you may
encounter
POST-DELEGATION DISPUTE RESOLUTION PROCEDURES (“PDDRPS”) – CONT.
PDDRPs are designed to help enforce commitments made by Registry
Operators, Registrars and Registrants regarding operation of Registries and
registration of domain names
Each procedure has its own dispute resolution providers (“Expert Panels”)
and its own set of rules
Registries/Registrars/Registrants commit to be bound by Panel
determinations and to implement remedies ICANN imposes
Five PDDRPs: UDRP, URS, Trademark PDDRP, RRDRP and PICDRP
1. UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (“UDRP”)
Establishes mechanism for resolving registration disputes between
Registrants (second level domain name holders) and third parties
Created by ICANN in 1999
Faster, less expensive than lawsuit
Provides neutral venue to challenge abusive registrations/cyber-squatting
Complainant must establish:
Domain name is identical or confusingly similar to a trademark or service mark in
which complainant has rights
Registrant does not have any rights or legitimate interests in domain name
Registrant registered domain name and is using it in bad faith
UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (“UDRP”) – CONT.
Complaints may be submitted to any approved UDRP Panel
Remedies limited to cancellation of Registrant’s domain name or transfer of
registration to complainant
Losing party may bring suit under local law (most jurisdictions)
All ICANN accredited Registrars must adhere to policy/incorporate it into
agreements with Registrants
Newly created as a mandatory complement to UDRP
Faster, less expensive
Designed to resolve clear-cut cases of trademark infringement
When trademark holder files complaint, Registrar freezes domain immediately,
then notifies entity against which complaint has been filed
Entity has 14 days to respond
If no reasonable response, domain name owner loses active online service (but
domain name stays with owner)
Expert Panels – National Arbitration Forum (“NAF”) and Asian Domain Name
Dispute Resolution Center (“ADNDRC”)
2. UNIFORM RAPID SUSPENSION SYSTEM (“URS” OR “URSS”)
Addresses Registry Operator’s complicity in trademark infringement
(first or second level)
Trademark holder must prove by clear and convincing evidence that
Registry Operator’s affirmative conduct caused, or materially contributed to,
harm to complainant’s mark
At least 30 days prior to filing formal complaint, rights holder must notify
Registry of alleged infringing conduct and express willingness to meet to
resolve issue
Expert Panels: WIPO, ADNDRC, NAF
3. TRADEMARK POST-DELEGATION DISPUTE RESOLUTION PROCEDURE (“TRADEMARK PDDRP”)
For use when community-based Registry Operator does not enforce
registration restrictions in Registry Agreement
Must be filed by harmed established institution associated with defined
community
Institution must first submit online complaint
Registry must take steps to investigate/remedy complaint
Formal proceeding may be filed if non-compliance continues
Expert Panels – NAF, ADNDRC
4. REGISTRY RESTRICTION DISPUTE RESOLUTION PROCEDURE (“RRDRP”)
To address violations of Public Interest Commitments (“PICs”) in Registry
Agreement/Applications
Procedure drafted to track the RRDRP
Mandatory engagement in online complaint process
Registry must investigate/remedy, if warranted
Complaint may be escalated if non-compliance continues
Complainant has burden of proving:
o Registry Operator violated one or more of PICs in Registry Agreement/application
o Resulting in measureable harm to Complainant
5. PUBLIC INTEREST COMMITMENTS DISPUTE RESOLUTION PROCESS (“PICDRP”)
CLOSING THOUGHTS
Except for UDRP, dispute resolution procedures are new
Some still in development
No one knows exactly how, or how well, they will operate
Most in IP and brand communities feel procedures inadequate
Brands/mark holders should continue to advocate for stronger protections,
while acquainting themselves now with the limited remedies that will be
available to protect their rights as the new gTLDs become operational
QUESTIONS TO DRIVE REGISTRATION STRATEGY
Does your company actively do business in countries that conduct
business in languages other than English?
IF YES, Select from the list of scripts below:
IDN Strings: Arabic – Chinese – Cyrillic – Hebrew – Hindi –
Japanese – Korean – Persian – Thai
Non-IDN Strings: French – German – Italian – Portuguese –
Romanian – Spanish
Is your company or its business model associated with particular
geographical areas (cities, regions, etc.)?
QUESTIONS TO DRIVE REGISTRATION STRATEGY
Does your company provide goods or services, or perceive risk if being
associated with cultural and/or religious terms, events, and activities?
Does your company actively engage in or sponsor community, charity, or
philanthropic activities?
Does your company actively sponsor major events/activities such as
sporting events/teams/leagues and/or entertainment events/tours (music
concerts, etc.)?
QUESTIONS TO DRIVE REGISTRATION STRATEGY
Does your company find value in or perceive risk if being associated with
legally defined company types?
Does your company provide goods or services that are associated with the
adult, gambling, or alcohol industries?
Does your company perceive risk about being associated with the adult,
gambling, or alcohol industries?
IF YES, perceived risk is: HIGH – MEDIUM – LOW
QUESTIONS TO DRIVE REGISTRATION STRATEGY
Does your company see a benefit in actively registering domain
names that are in areas that could be perceived as negative or
critical?
Does your company perceive risk in *not* registering domain names
that are in areas that could be perceived as negative or critical?
IF YES, perceived risk is: HIGH – MEDIUM – LOW
Does your company find value in utilizing for-fee blocking services
(when offered) that allow for the blocking from use of domain names
by other parties?
TLDs TO WATCH – SIX “SUPER SIX”
Gripe
Charitable
Vice
Cities
Corporate Identifiers
Generic
.App
.Blog
.Home
.News
.Sucks
.Web
.Corp
.Gmbh
.Inc
.Ltd
.Sarl
.Spa
.Charity
.Foundation
.Gives
.Care
.Help
.Gift/.Gifts
.Fail
.Feedback
.Forum
.Gripe
.Review /.Reviews
.Wtf
.Adult
.Bet
.Casino
.Porn
.Poker
.Sex
.Istanbul
.London
.Madrid
.NYC
.Paris
.Tokyo
NEW gTLDs BEST PRACTICES
Identify TLDs of interest
Begin tracking for Sunrise launches
Submit marks to TMCH where Sunrise registrations likely desired
Single registration to start
Monitor Sunrise eligibility requirements and submit additional as necessary
Implement policing strategies for marks submitted to TMCH
Utilize new RPMs and take action only when necessary
QUESTIONS
J. Scott Evans
Head of Global Brand, Domains & Copyright
Yahoo!
Judith L. Harris
Partner
Reed Smith
Elisa Cooper
Director of Product Marketing
MarkMonitor