Trademark Rights Protection Mechanisms for New gTLDs
For ICANN's New gTLD Program, a range of trademark-based "Rights Protection Mechanisms" (RPMs) has been established. Those include a formal pre-delegation objection procedure, as well as a range of RPMs available for use once a new gTLD has been approved and becomes operational. (According to ICANN, some new gTLDs may clear the application and evaluation process in late 2012, and be ready for delegation in early 2013.) Once new gTLDs are approved and operational, the RPMs available to trademark owners include a Trademark Clearinghouse (for use with Sunrise periods and Trademark Claims services), a Uniform Rapid Suspension system (URS), and a Post Delegation Dispute Resolution Procedure (PDDRP). The existing Uniform Domain Name Dispute Resolution Policy (UDRP) will also apply to all new gTLDs. A WIPO summary of each such RPM found in the authoritative ICANN Applicant Guidebook follows; policy background is available in the overview of WIPO Observations on New gTLD Dispute Resolution Mechanisms.
Legal Rights Objections
Prior to ICANN's approval of a New gTLD, trademark owners and Intergovernmental Organizations (IGOs) had until March 13, 2013 to file a formal objection to an application on the basis of a "Legal Rights Objection." Under this objection procedure, an independent panel (comprised of one or three external, neutral experts) will determine whether the applicant’s potential use of the applied-for gTLD would be likely to infringe the objector's existing trademark, or IGO name or acronym. This procedure is one of several types of pre-delegation objections (the others being non-trademark-based), and is described in more detail on the WIPO Center’s dedicated portal: Legal Rights Objections under ICANN's New gTLD Program - Filing a Legal Rights Objection at WIPO: What You Need To Know.
The Trademark Clearinghouse is a centralized database of verified data on registered (or court-validated, or "statute/treaty-protected") trademarks. The Clearinghouse is intended to minimize burdens on bona fide trademark owners by allowing them to deposit, for a (yet-to-be-determined) fee, their trademark data with one centralized source, rather than with each new gTLD registry; new gTLD registries will be able to retrieve such centralized data from the Clearinghouse.
The Clearinghouse is not itself an RPM, but rather facilitates use of RPMs such as Sunrise registration periods (during which trademark owners can purchase domain names before the general public, usually for a premium fee), Trademark Claims services (notice to a prospective domain name registrant of a potential conflict between the domain name and an existing trademark, with a notice to the trademark owner if the domain name is registered following the registrant’s representation of non infringement), and URS proceedings (described below).
It is important to note that, as adopted by ICANN, Sunrise periods (available for at least 30 days) and Claims services (available only for 60 days) are limited to exact matches of a domain name to a word mark, i.e., these services will not cover typos or "mark + term" scenarios.
The URS is intended to be a lighter, quicker complement to the existing UDRP. Like the UDRP, it is intended for clear-cut cases of trademark abuse. Under the URS, the only remedy which a panel may grant is the temporary suspension of a domain name for the duration of the registration period (which may be extended by the prevailing complainant for one year, at commercial rates). Initial URS timelines, at least from filing to a determination, are similar to those of the UDRP; also, the URS substantive criteria mirror those of the UDRP (but with a higher burden of proof for complainants, and additional registrant defenses).
It is important to note that, as adopted by ICANN, once a determination is rendered, a losing registrant has several appeal possibilities (from 30 days up to one year); trademark owners may consider this in deciding whether to use the URS or the UDRP, which provides a transfer, and thus does not carry a monitoring burden with it. (Either party may file a de novo appeal (for a fee) within 14 days.) There are also penalties for filing “abusive complaints” which may result in a ban on future URS filings.
The PDDRP is an administrative (court alternative) option for trademark owners to file an objection against a registry whose “affirmative conduct” in its operation or use of its gTLD is alleged to cause or materially contribute to trademark abuse. In this way, the PDDRP is intended to act as a higher-level enforcement tool to assist ICANN compliance activities, where rights holders may not be able to continue to turn solely to lower-level multijurisdictional enforcement options in a vastly expanded DNS.
It is important to note that, as adopted by ICANN, the PDDRP involves a number of procedural layers, such as an administrative compliance review, appointment of a “threshold review panel,” an expert determination as to liability under the procedure (with implementation of any remedies at ICANN’s discretion), a possible de novo appeal (under the same process), and further appeal to arbitration under ICANN’s registry terms. Beyond this, any PDDRP remedy specifically excludes third-party-registered second-level infringing names (which may have been the basis for filing the PDDRP case), and requires specific bad-faith conduct including profit from encouraging infringement in addition to “the typical registration fee.” Also, attorney fees are available against complainants only.
The UDRP is an out-of-court dispute resolution mechanism for trademark owners to resolve clear cases of bad-faith, abusive registration and use of domain names. The UDRP applies (by contract) to all domain name registrations in ICANN-approved gTLDs (e.g., .com, .net, .org). The UDRP or a variant also applies to a number of ccTLDs (more information). Standing to file a UDRP complaint is limited to trademark owners, who must demonstrate their rights. To prevail in a UDRP complaint, the complainant must further demonstrate that the domain name registrant has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. In the event of a successful claim, the infringing domain name registration is transferred to the complainant’s control.
More detailed UDRP background information is available in the WIPO Center’s publication: The UDRP and WIPO – INTA Conference Paper 2011, and on the Center’s UDRP resources page.
Complementing the WIPO UDRP Search Facility are a Legal Index of WIPO UDRP Panel Decisions and a globally used jurisprudential overview of UDRP cases available in the Center’s WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").