The Internet Corporation for Assigned Names and Numbers (ICANN) is in the process of introducing new top-level domains to the Internet as per its New gTLD Program. This program is expected to add well over 1,000 new TLDs to the handful today (.com, .net, .org, etc.). They will include generic terms as well as brand names; domains open and closed for second-level registration; domains in “Roman” script as well as internationalized domain names such as Arabic, Chinese and Cyrillic.
As part of this program, a range of Rights Protection Mechanisms (RPMs) notably for trademarks has been established to operate both “pre-delegation” before any new TLDs are approved and also “post-delegation” after they become operational.
WIPO’s engagement in the DNS and with the New gTLD Program
WIPO has been involved at the intersection of the domain name system (DNS) and intellectual property law and policy for over a decade. In 1998 and 2001 WIPO undertook two international consultation processes to develop specific policy recommendations. The First Process resulted in the adoption by ICANN of the Uniform Domain Name Dispute Resolution Policy (UDRP) to address trademark abuse in second-level domain names. The Second Process explored policy options for protection of certain non-trademark identifiers in the DNS. In 2005 WIPO further produced a report on New Generic Top-Level Domains: Intellectual Property Considerations which inter alia advised that in addition to the UDRP as a curative remedy, additional safeguards including preventive trademark protection would be necessary in any new TLDs.
For ICANN’s New gTLD Program, WIPO along with other stakeholders such as the International Trademark Association (INTA) cautioned that any rollout by ICANN of new TLDs must be carefully managed and effectively address the widely recognized potential increase of online trademark abuse and consumer confusion. Broadly speaking, WIPO stands for balanced and accessible IP protection and abuse prevention mechanisms that help safeguard a stable, credible DNS for the benefit for all Internet users.
Rights Protection Mechanisms applicable to new TLDs:
– Legal Rights Objections (LRO)
Devised in collaboration between WIPO and ICANN, the LRO is a dispute resolution procedure through which trademark owners and intergovernmental organizations may file a formal objection to a third party’s application for a new TLD. An independent panel of one or three neutral experts determines whether an applicant’s potential use of the disputed applied-for new TLD would cause impermissible infringement of the objector’s existing trademark, or IGO name or acronym.
The WIPO Arbitration and Mediation Center has been appointed by ICANN as the exclusive provider of LRO dispute resolution services. For ICANN’s above-mentioned current round of new TLDs, objectors filed with the WIPO Center 69 compliant objections, the expert decisions for which may be viewed on the LRO page of the WIPO Center website. The LRO procedure is one of several types of pre-delegation objection procedures (the others being non-trademark-based), described in the LRO Frequently Asked Questions.
– Trademark Clearinghouse (TMCH)
The TMCH is an ICANN-mandated centralized repository of data on trademarks that are registered, court-validated, or protected by statute/treaty. This database is supposed to provide authenticated information about trademarks to registries and registrars. It is not an RPM in itself, but rather facilitates access to and/or the use of RPMs, notably:
- Sunrise registration periods (during which trademark owners can purchase domain names corresponding exactly to their trademark before the general public);
- Trademark Claims service (where a notice is sent to a prospective domain name registrant of a potential conflict between the domain name being sought and an existing trademark, with a notice also sent to the trademark owner if after being notified of a potential conflict, a registrant proceeds to register the domain name); and
- Uniform Rapid Suspension proceedings (see below).
Trademark owners may register against a fee their trademarks in the TMCH themselves or via a trademark agent. For more information please refer to the TMCH website.
– Uniform Rapid Suspension System (URS)
Aiming at the clearest cases of trademark abuse, the URS is intended to offer a lighter complement to the existing UDRP (see below). It is not intended for use in proceedings with open questions of fact or more involved legal scenarios. While the substantive criteria of the URS are similar to the UDRP criteria, the URS is supposed to carry a higher burden of proof for complainants. The URS also includes a range of additional registrant defenses over an extended time period. The only remedy a URS panel may grant a successful complainant is the temporary suspension of a domain name for the remainder of the registration period (which may be extended by a prevailing complainant for one year at commercial rates).
Should a panel deny a URS complaint, the URS proceeding is terminated without prejudice for the complainant to proceed with an action under the UDRP or in a court of competent jurisdiction. A panel may also deem a URS complaint “abusive” which may result in a complainant being barred from utilizing the URS for a period of time.
Further information on the URS may be found on the ICANN New gTLD website.
– Post-Delegation Dispute Resolution Procedure (PDDRP)
The PDDRP is a higher-level RPM and an administrative alternative to court action regarding registries. Involving a number of procedural layers, this mechanism is intended to allow trademark owners to address certain scenarios where a registry operator’s operation or use of a domain leads to or supports trademark infringement, either on the top level or second level. There are three types of PDDRP: the Trademark PDDRP, the Registration Restrictions PDDRP, and the Public Interest Commitments PDDRP. The WIPO Center has been appointed as a provider for the Trademark PDDRP.
Under the PDDRP trademark owners will be required to demonstrate, by clear and convincing evidence a) affirmative conduct by a registry at the top level that infringes a trademark; and/or b) at the second level, affirmative conduct by a registry that amounts to a substantial pattern or practice of specific bad-faith intent by the registry to profit from the sale of domain names that infringe trademark rights. The PDDRP as set out by ICANN states that a registry operator is not liable under the PDDRP solely because infringing names are in its registry, or the registry operator knows infringing names are in its registry, or it did not monitor names registered in its registry.
– Uniform Domain Name Dispute Resolution Policy (UDRP)
The UDRP is an out-of-court dispute resolution mechanism for trademark owners to resolve cases of bad-faith, abusive registration and use of domain names. Designed by WIPO in 1999, the UDRP applies (by contract) to all domain name registrations in ICANN-approved TLDs, both current and new. The UDRP or a variant also applies to a number of ccTLDs (WIPO listing). Standing to file a UDRP case is limited to trademark owners, who must assert their rights in the complaint. In order to prevail, the complainant must further demonstrate that the domain name registrant lacks rights or legitimate interests in the name, and that the registrant has registered and uses the name in bad faith. If the complaint is successful, the infringing domain name registration is transferred to the complainant following a ten-day waiting period in the event the respondent would seek recourse to a court of competent jurisdiction.
The WIPO Center has administered over 27,000 UDRP-based cases and makes available a range of globally used jurisprudential UDRP Resources. Further information on the UDRP is also available on the WIPO UDRP page.
Source: WIPO, Arbitration and Mediation Center
