The All New gTLDs
IYour Options Court Alternative Legal Processes
Despite the best efforts of ICANN and the various gTLD registries and their partner registrars, it is a certainty that someone, somewhere will object to someone registering a particular domain name, especially if that registrant is a "cybersquatter". Even without them, two businesses might believe they have equally strong claims to a name.
Fortunately, ICANN offers a set of guidelines and procedures for resolving disputes around the registration of domain names. These guidelines were designed “to protect recognized brands and trademarks from abusive registrations by third party registrants who intentionally register confusingly similar domain names in bad faith for profit.”
There are two primary mechanisms for resolving such claims.
In both cases, the essential issues at hand are whether the registrant bought the name for the primary purpose of demanding onerous fees to regain the name, and whether the registrants current ownership is confusing users and/or damaging the other company's brand.
The UDRP guidelines state that in order to be valid and eligible, claimants must be able to establish evidence for their disputes to be supported on the following grounds:
Now what you might ask does that mean? Well, “bad faith” generally refers to three particular types of situation:
URS or the Uniform Rapid Suspension System was designed to provide trademark owners with a quick, simple and cost effective way of taking down websites that infringe their rights in relation to their trademark, such as registering similar or identical domain names. It was intended as a lighter, swifter alternative to the aforementioned UDRP.
The original proposal set the arbitration fee at $300-$500 putting URS within reach of even the smallest niche brands; however since putting the provision of the arbitration service out to tender ICANN has struggled to find any provider who can meet the levels of service detailed as essential to URS for the fees they’d like to charge. ICANN have set aside budget in 2013 to resolve this issue by redesigning the URSS.
The main difference between the URSS and the UDRP is that the URSS has stricter criteria and so not everyone is eligible to file for URS. One of the unique features of the URSS is that it will contain and uphold penalties for abusive filings, which could result in a ban on future URS filings. Another interesting feature is that if the decision of the URS goes against the domain name registrant they still have several appeal possibilities (from 30 days up to one year).
Additionally the UDRP allows for domain name transfer whereas with a URS the domain name is never transferred; it remains the property of the owner although they are not allowed to have any online presence using it for the entire duration of its registration.
As a trademark owner, you may wish to consider this in your decision as to whether to use the URS or the UDRP (which includes the provision of a transfer of the domain name to you as the prevailing party and therefore does not carry a monitoring burden with it).
The PDDRP is another administrative option for trademark owners to file an objection against a registry if its’ “affirmative conduct” in the use or operation of its gTLD is supposed to have caused or contributed to trademark abuse.
PDDRP was designed to perform as a higher-level enforcement tool to support ICANN compliance activities. It is used where rights holding trademark owners are not in a position to continue to pursue lower-level multijurisdictional enforcement options in a vastly expanded DNS.
PDDRP involves a number of complex procedural layers and as such may not be a viable option for businesses seeking swift action or a simple process. Also PDDRP doesn’t cover third-party-registered infringing second-level domain names and requires evidence of specific bad-faith conduct (profit from encouraging infringement in addition to “the typical registration fee”) so this process is not always suitable; be sure to check carefully that your situation matches these criteria before beginning PDDRP proceedings.
Did you know that just over 50% of lawyers are in private practice? The remainder are spread throughout government, industry, judicial clerkships, and academia.
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If you`re reading this, then you`re one of the 2 billion plus people who use the Internet
As hundreds of new gTLDs are introduced in the not-too-distant future, a new era of opportunity
Trademark owners will be profoundly affected by the introduction of new generic top level domains.
It`s a whole new internet
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