By now, many brand owners know about the new generic top-level domain (gTLD) program
launched by the Internet Corporation for Assigned Names and Numbers (ICANN) in 2012. Through this program, any party could apply to operate its own new gTLD (the part of a domain name after the dot, such as .com, .net, or .info). Over one third
of the applied-for new gTLDs were for brand names (also known as .brand TLDs), such as .google and .walmart, which will be operated and used by the brand owner itself. The remaining applied-for new gTLDs were for generic words to be operated generally as open spaces (aside from a handful of industry-restricted terms) for anyone to register new domain names (such as .how and .sports).
Although there are clear competition and choice benefits to expanding the DNS in this way, the expansion also raises important issues regarding trust and consumer protection. This vast expansion of new TLD spaces was a clear opportunity for additional cybersquatting, fraud, and other abuses that disparately impact brand owners and the consumers they serve.
To that end, as part of the rollout of these new gTLDs, ICANN implemented certain Rights Protection Mechanisms (RPMs)
designed to increase efficiency and reduce costs for brand owners to protect their trademarks across the hundreds of open new gTLDs. These RPMs were developed in addition to the long-standing Uniform Domain Name Dispute Resolution Policy (UDRP) that is applicable to all new gTLDs.
The ICANN community has begun a process
to review the RPMs to determine whether they have been working as intended or whether they are in need of tweaking or rebalancing. It is critical that brand owners engage more heavily in these discussions to counterbalance efforts from members of the ICANN community who may try to weaken these RPMs.
The ICANN RPM Review Working Group
The ICANN Rights Protection Mechanisms (RPM) Review Working Group was officially chartered
on March 15, 2016, and is currently very active. The Working Group Charter requires the Working Group to review all RPMs in two phases:
- Phase one focuses on all of the RPMs developed for the new gTLD program—the Trademark Clearinghouse (TMCH), Sunrise Period, Trademark Claims, and the Uniform Rapid Suspension System (URS); and
- Phase two will focus specifically on a review of the UDRP. The ultimate question the Working Group has been asked to answer is “whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals.” Thus far, the Working Group has focused on three of the mechanisms, which are discussed in more detail below.
Trademark Post-Delegation Dispute Resolution Procedure (PDDRP)
The Working Group began its deliberations about this mechanism, which allows brand owners to pursue a complaint against a gTLD registry that is engaging in trademark infringement at the top level or contributing to infringement at the second level. It is important to note that under the current PDDRP, mere knowledge of infringing domains in a TLD is not sufficient to prevail against the registry operator. The PDDRP has, thus far, never been used; one reason for that is because registry operators have generally been careful to avoid the affirmative inducement of infringing registrations prohibited under the mechanism, at least to such a degree that brand owners would be able to prove specific bad faith intent and satisfy the high “clear and convincing evidence” standard under the PDDRP.
While some modification could prove useful to brand owners, the bottom line is that the high bar set by the basic elements and standard of proof under the PDDRP remain the primary obstacles to its utility. In essence, the PDDRP may have acted as a deterrent against truly abusive practices by registry operators, but will likely remain on the shelf as an affirmative RPM for the foreseeable future unless brand owners advocate for key changes, including allowing multiple brand owners to file a PDDRP jointly.
Trademark Clearinghouse (TMCH) and Sunrise Period
The TMCH and Sunrise Period are much more frequently used mechanisms and the Working Group has begun initial deliberations regarding their effectiveness. The TMCH is a repository for trademark rights that facilitates the Sunrise and Trademark Claims systems. The Sunrise Period allows brand owners with marks registered in the TMCH to reserve corresponding domain names before they are available to the general public.
Although discussions remain in early stages, it is already clear that some members of the community are purposely misrepresenting the function of the TMCH in order to obtain changes that could weaken the TMCH for brand owners. In particular, they have suggested: (1) the need to heighten requirements demonstrating substantial use of a mark in commerce; and (2) protection for only fanciful marks (and limiting protection for arbitrary marks or descriptive marks that have acquired secondary meaning, which might be considered generic words when not used in the trademark context).
In a similar vein, these participants have repeatedly brought up “gaming” of the TMCH as a reason for reconsidering the grounds for recording marks in the TMCH, despite the lack of evidence of widespread misuse (which could include obtaining a trademark registration in a jurisdiction with low examination standards in order to satisfy the TMCH standards and gain priority domain name registrations of valuable generic or descriptive term domain names during Sunrise periods).
Ultimately, attempts to deny TMCH protection based on the jurisdiction of a registration is a dangerous prospect, given that mark owners come from many jurisdictions with differing national examination regimes. Neither ICANN, nor its designated TMCH agent, should be making qualitative judgments regarding such varying regimes beyond the basic requirement that the mark be used in commerce in order to be eligible for Sunrise registrations. Again, brand owners must step up engagement on these discussions to counter efforts to dilute the TMCH.
Unsurprisingly, domain investor representatives have also pushed back on early comments from brand owner representatives suggesting that Sunrise and Claims be expanded to include variations of TMCH-recorded marks, such as plurals or marks+keywords, in order to prevent circumvention of the RPMs through slight variations in how the mark is targeted.
Call for Brand Owner Involvement—Inside and Outside Counsel Must Engage
Although the RPM Review Working Group remains in the early stages of its work, it has already become clear that anyone who uses any of the RPMs on behalf of their clients must become more involved—not only to push for needed improvements to the RPMs, but also to thwart concerted efforts to weaken these mechanisms.
While there are a number of dedicated brand owner representatives making their voices heard, the Working Group needs to hear from brand owners themselves and not just their outside counsel or consultants. Increased participation is critical, not only to preserve and enhance the TMCH and Sunrise mechanisms, which have been the subject of ongoing discussions, but also with respect to future Working Group discussions regarding Trademark Claims services, the URS process, and—perhaps most critically of all—with respect to the UDRP, which has been the touchstone of online brand protection in the DNS for well over a decade.
Brand owners and trademark counsel who are interested in helping to shape the review of the RPMs are encouraged to sign up for the Working Group as either active members or observers.
Additional information about the Working Group is available here. You may also contact Lori Schulman, Senior Director, Internet Policy at email@example.com regarding INTA’s involvement in this Working Group.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2016 International Trademark Association