With new gTLD registries slated to launch starting late next year, there appears to be an increased sense of urgency surrounding the need for improved rights protection mechanisms at the second-level. Perhaps this is due to the larger than expected number of applications submitted, or the mere fact that new gTLDs will soon become a reality? Whatever the outcome will be from this new interest and action, there are now three new proposals for improving protections at the second-level which all propose changes that could help brands defend themselves in the new namespace. We support the dialogue wholeheartedly.
ICANN's Business Constituency Position
Representing the interests of commercial Internet users within ICANN, the Business Constituency has long advocated that ICANN implement stronger rights protection mechanisms.
Of all positions, this appears to be most favorable to brand owners as it 1) recommends that the Claims Service runs indefinitely, 2) advocates that that notices are sent to rights owners when a domain is registered containing the trademark and a generic term , 3) proposes that rights owners be allowed to permanently block the registration of trademarks and trademarks + generic terms across all registries and 4) requires that all New gTLD registrars comply with the new Registrar Accreditation Agreement which is expected to incorporate some notion of Whois validation / verification.
The MelbourneIT Position
MelbourneIT, the sixth largest domain name registrar, also recently detailed a new proposal advocating stronger rights protections for a limited set of 'High At-Risk Marks'. On the surface, the recommendations appear to be on-target.
However, the limitation of this proposal rests on the fact that the expanded protections only apply to a very limited set of trademarks, as the threshold for achieving status as a 'High At-Risk Marks' is extremely high.
In order to qualify as a "High At-Risk Mark" the mark must 1) have been registered at least 5 years before the date of Trademark Clearinghouse validation; 2) match the organization's primary online presence; 3) not also be a generic term; 4) have been the subject of five successful UDRPs, court actions, or suspensions; and 5) achieve a score of 100 points where 1 point is granted for each legal protection in a jurisdiction and 1 point is granted for each successful UDRP, court action or suspension.
As a result of these requirements, most brands will not be able to take advantage of the extended protections being offered by this proposal.
Brand Owner Summit Position
Representing the interests of major brands, a set of recommendations was outlined in a letter to Larry Stickling, US Assistant Secretary for Communications and Information and David Kappos, Director of the USPTO.
Like the Business Constituency position, this proposal recommends that the Claims Service notify rights owners of domain name registrations containing a trademark. It also recommends that the Claims Service is extended beyond 60 days.
However, this proposal advocates that registries should be required to offer registration blocking of exact-match trademarks during their respective Sunrise periods. While the "block" is to exist in perpetuity, fees to obtain the block from each registry will still exist. In essence, this form of blocking is no different than registering domains defensively, except that the registry will ensure that the domain does not resolve. Assuming a blocking fee of $200 across 700 registries, costs for blocking would run ~$140,000 for a single mark.
This proposal also makes a number of very good recommendations for improvements to the Uniform Rapid Suspension (URS) which are outlined in the table below.
Comparison of Proposals
|Expansion of Trademark Claims Notification||Trademark Claims Timing||Defensive Blocking at the Second-Level||URS Improvements||Whois Validation|
|Business Constituency Position||Notices to be sent for exact match and exact match + generic word||Operate indefinitely||Ability to block identical match of trademark or trademark + generic terms across all gTLD registries||Make suspended domains ineligible for future registration OR generate claims notices for future registration attempts||Compliance with new RAA (which requires Whois validation)|
|MelbourneIT Position||No change recommended||For 'High At-Risk Marks' only, operate indefinitely||For 'High At-Risk Marks' only, allow blocking for exact match only during Sunrise periods at each new gTLD registry||For 'High At-Risk Marks' only, suspend within 48 hours unless Response fee is paid||For 'High At-Risk Marks' only, require validation of two contact details (i.e., phone number + email address)|
|Brand Owner Summit Position||Notices to be sent for 1) domains containing a trademark and for 2) domains that consist of a trademark + generic word from description of goods and services||Service to run longer than 60 days||Ability to block trademarks on a per registry basis similar to the ICM's .XXX||Integration with TMCH to make process simpler, faster and less expensive. Loser always pays. If registrant does not respond, rights owner is responsible for the payment of administrative fees only. URS to operate on a low or no-cost basis. List of recidivist bad actors should be tracked.||No change recommended|
We hope that the community rallies around these proposals to improve second-level rights protection mechanisms and applaud the new initiatives that will, if implemented, make the Internet a safer place for brands and the consumers that love them.
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