Trademark Owners Brace Yourselves…
New generic top-level domains (gTLD) are on their way. By the end of this year, the Internet Corporation of Assigned Names and Numbers (ICANN) plans to implement a new gTLD application round that will allow for the expansion of open (unrestricted) or community-based (operated for benefit of defined community) top-level domains.
Who needs .com, .net, .info., .org, .biz., when you can have .yourmark as a gTLD. The problem is that you may not be the only one interested in capitalizing on your mark. Cybersquatters are notorious for registering and buying domain names that match the name of an existing business or someone else’s trademark with the intent of selling the domain name to that business or trademark owner for a profit.
Sounds illegal? It is. Under the Anticybersquatting Consumer Protection Act of 1999[1], the owner of a mark can file a civil action against a second-level domain name (that is, yourmark before the .com or .net or .org) registrant or the registrant’s authorized licensee who, with a bad faith intent to profit from that mark, registers, traffics in, or uses a domain name which, at the time of its registration, is: (1) identical or confusingly similar to a distinctive mark; (2) dilutive of a famous mark; or (3) is a protected trademark, word, or name.
A trademark owner may also seek recourse against cybersquatters under ICANN’s Uniform Dispute Resolution Policy (UDRP). A successful action may result in the cancellation or transfer of the disputed registration to the trademark owner.
While these legal and equitable remedies have helped trademark attorneys defend their clients' rights against cybersquatting and other infringing trademark activity on the Internet, they will not be enough when the new gTLD program is launched opening up the floodgates for domain name mania.
Fortunately, ICANN is aware of the importance of balancing the interests of innovation, change and competition with the need to protect the rights of trademark owners from abusive domain registration and infringement. ICANN’s Intellectual Property Constituency has formed an Implementation Recommendation Team (IRT) to address this growing concern. Last month, IRT published a draft report proposing preventive and defensive protection mechanisms for trademark owners under the new gTLD program. Their recommendations include:
- an IP Clearinghouse for storing information on registered and unregistered marks that can be used by gTLD registries and registrars to support other applications;
- Globally Protected Marks List. Under GPML, globally-recognized or famous marks meeting stringent criteria would be eligible for this type pre-launch rights protection;
- Uniform Rapid Suspension System (URS) that would provide low-cost rapid take down measures for clear cut cases of cybersquatting and trademark abuse; and
- Watch Service. Trademark owners could sign up for a Watch Service, which would notify them of applications for top-level and second-level domain names that match their mark.
I’ve read the report, and I am quite pleased with the mechanisms proposed to protect trademark owners against the potential risks for abuse under the new gTLD program. But are these protection mechanisms enough to safeguard the interests of trademark owners or do we need more? Are the IRT's proposals clear enough for ICANN to implement or does the IRT need to provide more guidance?
Just in case you missed it, the report is online at: http://www.icann.org/en/topics/new-gtlds/irt-draft-report-trademark-protection-24apr09-en.pdf. IRT is soliciting public comment and will be issuing a final report on May 24, 2009. Hey, I want to know your thoughts, too. Write me back soon...I don’t want to wait until May 24th.
[1] Anticybersquatting Consumer Protection Act [enacted by reference in § 1000(a)(9) of Pub. L. No. 106-113 (Nov. 29, 1999), and published as Title III, § 3001 et seq., in Appendix I of that law], enacting 15 U.S.C. § 1125(d) and other codified provisions as well as uncodified remedial provisions.
