The introduction by ICAAN of more than 1300 new generic Top-Level domains (gTLD’s) offers a new way for brand owners to communicate with their consumers online. An exciting prospect but there is of course a greater threat of cybersquatting in this new landscape. In this article, we look at the defence mechanisms available to brand owners to deal with this new cybersquatting threat.
• Trade Mark Clearing House (TMCH)
The Trade Mark Clearing House (TMCH) is a database of verified trade mark information. A brand owner can deposit their trade mark information into one centralised system for a single fee rather than with multiple individual Registries during their sunrise periods. The TMCH was originally seen as a method of saving brand owners the cost of multiple trade mark validations in many new sunrises. A single validated trade mark can be used for any sunrise period for which it meets the Registry requirements and in this regard brand owners only need to pay to have their trade mark validated once. There is however an annual renewal fee to re-validate information. Apart from participation in sunrises, there is also an additional benefit for trade mark owners as when a third party applies for a domain name which matches a trade mark in the TMCH, they are notified of the match at the point of registration. The applicant must acknowledge the notification in order to proceed with the registration and if they proceed in registering the domain, the trade mark owner is notified. The TMCH is a useful tool, however taking into account renewal fees, costs can mount quickly and brand owners should be conscious to focus on trade marks which are registered and are in force in the key markets of interest and which are vital to their online presence.
• Uniform Rapid Suspension (URS) System
Apart from the UDRP (discussed below), we have also seen the introduction of a new Uniform Rapid Suspension System (URS) which is a fast complaint procedure modelled on the existing UDRP system. The URS is designed to be a lower cost alternative to the UDRP proceedings and applies to all new gTLDs. The main differences between the URS and the UDRP is that the URS is a significantly quicker procedure and a decision can issue in a matter of days as opposed to months. In addition the URS is less expensive and also has an appeal process unlike the UDRP system. On the other hand, submissions are significantly restricted when using the URS system and there is a stricter burden of proof requiring “clear and convincing evidence”. In addition, the remedies are limited in that the domain name can only be suspended and a transfer or cancellation is not possible under the URS. The URS is a good option for owners of well known trade marks to quickly stop an opportunistic cybersquatter, however it may not be the best course of action where the complainant’s mark has a limited reputation or is not registered, where the respondent has a legitimate interest argument or where there is a need for a final decision quickly (bearing in mind the ability to appeal).
• Uniform Domain Name Resolution Policy (UDRP)
The UDRP was established by ICANN for the resolution of disputes regarding the registration of Internet domain names. In this regard it involves arbitration proceedings for bad faith or abusive applications. The UDRP system is limited to trade mark owners and the complainant must establish that the domain name is identical or confusingly similar to a trade mark in which the complainant has rights, that the registrant has no rights or legitimate interests in the domain name and that the registrant has both registered and used the domain name in bad faith. Where the UDRP complaint is successful, the domain name can be transferred to the complainant or cancelled. The UDRP is a very well established system and statistically about 90% of UDRP cases that proceed to a decision are decided in favour of the complainant.
• Donuts Domain Protected Marks List (DPML)
Donuts, the applicant for over three hundred new gTLD’s have created a domain name blocking mechanism “Domains Protected Marks List (DPML)” for brand owners. The DPML allows trade mark owners to block their marks and related terms at the second level in all of Donut’s new gTLDs for a single fee. The DPML is marketed as an economical way for brand mark owners to protect their rights from getting into the hands of cyber squatters. As a first step a brand owner must register their trade mark with the TMCH and once the trade mark information has been validated, the brand owner can add the trade mark to the DPML Register. The trade mark is then blocked from registration in all Donuts TLD’s for an initial five year period and the subscription can be renewed in increments of one to ten years. In terms of the value of this mechanism, it enables brand owners to protect more than their exact trade marks as the DPML protects key words that contain their mark and it will cost brand owners significantly less than if they were to defensively register terms in all the TLD’s. It is important to note that the DPML block will apply across all gTLD’s ultimately operated by Donuts and while Donuts applied for 307 gTLDs it is estimated that it will operate in the region of 200.
Of course some may argue that URLs are less important than they once were. It is true that the days of typing a domain name into a web browser are gone and have been replaced with search, however from a branding perspective the new gTLD’s offer many possibilities in terms of communicating with brand owners. Consequently, where brand owners are considering or have already registered domains under the new gTLD’s, it is important to be aware of the greater likelihood of cybersquatting and the need to budget not only for registration of domain names but also for the protection of their trade marks online using the mechanisms discussed above.
by Carol Gormley | Irish and European Trade Mark Attorney