What about trademarks on the Internet?
Whether as part of a domain name, on a website or in search, trademarks are used by consumers to identify and distinguish the origin, source and authenticity of the products and services they seek on the Internet.
INTA is working to ensure that trademarks receive the same protection on the Internet as they do in the brick-and-mortar world, to enable consumers to make safe, reliable and informed choices about the products and services they seek on the Internet.
Domain Name System Policy
INTA serves as a leading voice for trademark owners in the evolution of cyberspace, and is particularly interested in ensuring the proper oversight and management of the Internet’s domain name system. As a founding member of the Intellectual Property Constituency (IPC) of ICANN (the Internet Corporation for Assigned Names and Numbers), INTA advances the importance of trademarks in the development of global Internet domain name system policy.
By participating in the IPC and ICANN working groups, issuing comments to proposed policies and regular attendance at ICANN meetings, INTA is closely monitoring issues and advocating for brand owners in the domain name system. Brand owners' voices are critical to the security and stability of the Internet as, ultimately, they are protecting consumers from fraud and abuse.
INTA’s permanent representative to ICANN is Lori Schulman, Senior Director, Internet Policy. For questions about INTA’s involvement in ICANN and Internet governance, you may contact Ms. Schulman at firstname.lastname@example.org
New gTLDs and Rights Protection Mechanisms (RPMs)
ICANN’s new gTLD program launched in January 2012 when 1930 applications were received for new domain strings which included .brands, .generic terms and Internationalized Domains (IDNs). The first new gTLD string was delegated to a Chinese character string for “games” in October 2013. Since then, more than 500 new names have been delegated. See a complete list of delegated names
The introduction of the new gTLDs created new opportunities and new challenges for brand owners. Some brand owners have chosen to launch domains for their .brand and create new venues for brand awareness and community building. Most brand owners are watching the new domains to make sure that their brands protected within the new domains.
INTA has advocated for RPMs to help brand owners police and protect their brands. These mechanisms include:
- the Uniform Dispute Resolution Policy (UDRP) which is an arbitration mechanism for bad faith registrations;
- Sunrise Registration for trademark owners;
- the Trademark Clearing House (TMCH), a system where rights holders can register their trademarks and receive notification when a domain matching the registered trademark has been purchased;
- Uniform Rapid Suspension (URS) which provides a lower cost, faster track mechanism for rights holders who can demonstrate the most-clear cut cases of infringement; and
- Post-Delegation Dispute Resolution Procedures (PDDRP) which is an avenue for administrative complaints against domain registries that may be complicit in trademark infringement.
As a participant in the ICANN process, INTA is monitoring the use and efficacy of RPMs and contributing to the ongoing discussion as to how they can be most effectively utilized and improved to the benefit of brand owners and their consumers. Information on the new gTLD system and RPMs can be found at newgtlds.icann.org
Further, INTA supports accessible and accurate information directories (Whois databases) that identify the owners and administrators of domain names. Open directories are critically important to enforcing trademark rights and combating criminal activity such as counterfeiting and consumer fraud. Information on Whois databases and ICANN policy can be found at whois.icann.org
The hot topic in Internet governance is the pending transition of a critical part of domain name system management from the United States Government to the Private Sector. Domain names correspond to numbers that resolve as addresses for Internet servers. These functions are subject to oversight by the Internet Assigned Numbers Authority (IANA) under a contract between ICANN and the U.S. Department of Commerce, National Telecommunications and Information Administration (NTIA).
The IANA functions include: (1) the coordination of the assignment of technical Internet protocol parameters; (2) the administration of certain responsibilities associated with DNS root zone management; (3) the allocation of Internet numbering resources; and (4) other services related to the management of the .ARPA and .INT top-level domains (TLDs). This function serves as the backbone for the Internet.
On March 14, 2014, NTIA announced its intent
to transition key Internet domain name functions to the global multi-stakeholder community which includes businesses, governments, noncommercial users and civil society. As the current contractor for the IANA function and the custodian of the domain name system, ICANN is tasked with formulating a transition plan. NTIA has communicated to ICANN that the transition proposal must have broad community support and address the following four principles: (i) Support and enhance the multi-stakeholder model; (ii) Maintain the security, stability, and resiliency of the Internet DNS; (iii) Meet the needs and expectation of the global customers and partners of the IANA services; and, (iv) Maintain the openness of the Internet. See ICANN’s activities related to the IANA transition
How will the transition affect trademark owners? A critical component of the transition plan is ensuring ICANN’s accountability in terms of its governance, contract compliance and policy development. ICANN’s enforcement of its policies with regard to protecting recognized intellectual property rights is a component of accountability. Enforcement should be managed through reliable and fair policies for protecting intellectual property as names are delegated to registries and purchased through registrars. The contractual relationships with these entities must be consistently monitored, enforced and informed by ICANN. Sunrise periods and dispute resolution processes must also be consistently administered with reasonable outcomes. Maintaining the openness of the Internet is key to the smooth functioning of commerce and enforcement of trademark rights. Any plan for transition requires key accountability and security elements that protect rights holders and, ultimately, the end user—the consumer. INTA is monitoring the process for the IANA transition. INTA members participate in key working groups that are focused on the issues that concern trademark holders