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
Registration Directory Services (WHOIS): Changes are Coming
INTA supports accessible, contactable and accurate information directories (WHOIS databases) that identify the owners and administrators of domain names.
WHOIS has been a fundamental tool for trademark practitioners for two decades, effectively aiding in the prevention and prosecution of counterfeiting, fraud and other criminal activities on the Internet. The implementation of Europe’s General Data Protection Regulation (GDPR) will likely compel ICANN to limit the amount of open, public data currently available from the WHOIS database. ICANN has deliberated on the best way to move forward and has proposed an Interim Compliance Model. Details of the models are not finalized and timely implementation is unlikely. This may mean WHOIS will “blackout” or be inaccessible for a nonspecific period.
INTA respects individual privacy and advocates for the correct balance and proportionate response to the multiplicity of harms that are addressed through individual privacy protection, consumer protection and law enforcement. INTA advocates that any alteration or replacement model adopted by ICANN, whether temporary, permanent, accredited or open, provide effective and expeditious access to registrant data and aid in law enforcement and IP rights protection. This will ensure that security experts, attorneys, and consumer advocates can continue to do the vital work that has sustained the health of the domain name system (DNS) for 20 years.
ICANN has several streams of work devoted to resolving critical issues regarding GDPR implementation and the Next Generation of Registrant Directory Services. INTA members are encouraged to participate in this work. Information on Whois databases and ICANN policy can be found at whois.icann.org
. INTA’s comments regarding GDPR and Whois may be found in the Testimony and Submissions section below.
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 1200 new names have been delegated. See a complete list of delegated names
The introduction of new gTLDs creates new opportunities and new challenges for brand owners. Some brand owners have chosen to launch domains for their .brand and build 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.
All of the RPM’s and the UDRP are currently under review and INTA has INTA has issued a call to action
for all brand owners to become involved in policy making particularly the RPM review. While ICANN issues may seem obscure they affect every brand owner and are critical to consumer protection and brand enforcement. Brand owners cannot stand on the sidelines. All ICANN meetings may be followed remotely so travel need not be an obstacle to participation.
Information on the new gTLD system and RPMs can be found at newgtlds.icann.org. Please contact Lori Schulman, email@example.com for information regarding joining the RPM review working group. We need your voice!
October 1, 2016 marked an historic day in internet governance as the United States Government allowed its contract with the Internet Corporation for Assigned Names and Numbers (ICANN) expire. The contract was last vestige of US control over the internet’s master directory of names, numbers and protocols known as the IANA Function. The transition was predicated on ICANN adopting a plan to transition the technical functions to a new, wholly owned subsidiary and implementing key accountability reforms spearheaded by the multistakeholder community which comprises the technical community, private sector and civil society organizations. Many INTA members were involved in the working group that devised the plan and continue to work on implementation measures.
On March 14, 2014, NTIA announced its intent to transition key Internet domain name functions to the global multi-stakeholder community. As the contractor for the IANA function and the custodian of the domain name system, ICANN was tasked with formulating a transition plan that addressed 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 does the transition affect trademark owners?
As a result of transition, the ICANN community has the power to remove single board members or the entire board, results of independent review decisions will be binding on the board and staff will be subject to new accountability measures that are being negotiated as part of a second round of policy development known as “Work Stream 2”. Work Stream 2 is looking at 9 major areas of concern: diversity, guidelines for good faith conduct for exercising removal of ICANN board members, human rights, jurisdiction, the role of the ombudsman, reviewing the community engagement process, and supporting organization/advisory accountability, staff accountability and transparency.
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.
Internet Resources for INTA Members
INTA is pleased to announce the posting of the ICANN101 slide presentation under the Resources tab below. ICANN101 provides a high level overview of how ICANN operates and highlights the issues that are important to INTA members in an understandable way. Under the Reports tab, we are pleased to provide charts that summarize the trademark and copyright protections afforded rights owners and associated policies of social networking sites and related services.