In a positive move for brand owners, ICANN has recognised that more policy work is required to address the issue of defensive second-level registrations in the new gTLDs.
Following a Public Comment period that ran in the first quarter of 2012, the New gTLD Program Committee, a newly-created group of non-conflicted ICANN board members has asked the ICANN staff to provide a briefing paper on the topic. It has also requested that the gTLD policy-making body, the GNSO Council, considers whether more protection might be needed at the second level.
Here’s our overview of the measures that are currently planned, and suggested alternatives.
Mandated Rights Protection Mechanisms
All new gTLD registry operators must offer a Sunrise Period and an IP Claims Service (also known as a Trademark Claims Service) when they launch. ICANN has commissioned the Trademark Clearinghouse (TMCH) to facilitate these mechanisms. It will act as a central repository of validated trademark rights data, charging trademark owners an estimated $150 per registered trademark for inclusion.
New gTLD Registry Operators (ROs) are obliged to provide a Sunrise Period, which is a priority registration period during which IP rights holders can register domains which exactly match their marks before General Availability opens. ICANN is requiring all ROs to run their Sunrise for a minimum of 30 days. During this phase, ROs must also provide notice to all trademark holders with a mark in the TMCH if someone has applied for a registration which exactlymatches their mark.
It should be emphasised that payment for inclusion in the TMCH does not cover the cost of filing a registration in a registry. ROs can charge as much as they want for a Sunrise registration. All that the TMCH does is to remove the requirement for the mark to be validated by the individual registry during Sunrise.
Trademark Claims Service
Post-Sunrise, all ROs must provide an IP or Trademark Claims Service for at least the first 60 days of Landrush or General Availability. During this period, a registrant who attempts to register a domain name which is an exact match to a trademark recorded in the TMCH will be provided with an electronic warning notice and a requirement to confirm that to the best of his/her knowledge, s/he is not infringing the trademark. If after this notice the registrant proceeds to register the domain name, the IP rights holder is notified.
The Uniform Rapid Suspension (URS) is a complaints procedure for IP Rights Holders who believe that their rights are being infringed by a domain name within a gTLD registry. It is intended to be inexpensive (it was originally expected to cost around $300 per proceeding). It was designed to be faster and less complex than the UDRP and other DRS models, to tackle “Slam dunk” cases of infringement where the domain supports a website. The initial review is designed to take two business days and the determination by a neutral panellist is expected to take less than a month. The URS works by ‘locking’ (or ‘suspending’) a domain: there is no transfer to the complainant.
The Post-Delegation Dispute Resolution Protection (PDDRP) is designed to enable rights owners to challenge “bad apple” registry operators who are complicit in consistent infringement of IP at the second level.
In addition, all ROs must implement the Uniform Domain-Name Dispute Resolution Policy (UDRP), the single proven effective measure for tackling abusive registration at the second level and operate Thick Whois (holding all data centrally).
There is a great deal of concern that the above mandated measures do not go far enough in protecting brand owner rights and therefore consumers’ best interests. The only really effective solution is to register pre-emptively which is likely to be massively expensive.
If the ICANN Board is serious about limiting second level Defensive Registration, here is a short-list of solutions which have been put forward by actors in the IP/domain name community- :
Loser pays – Require the loser to pay in the case of all UDRP, URS, ADR or DRS actions. If the money can’t be collected from the loser, then the registrar that facilitated the registration should be charged. We believe this measure would signal the end of the systemic cybersquatting that members of the ICANN community have tolerated for the past decade.
Block Lists – In the 24 months following the launch of the first registry, allow any mark owner which has filed 10 or more successful dispute resolution proceedings in the past decade to have a block put on the corresponding string at the second level in all registries. Applications for registration can only proceed if the rights owner agrees. Re-evaluate this policy after 24 months.
Globally Protected Marks List – Give enhanced protection for “supernova trademarks” which are at high risk in perpetuity. ‘High risk’ could be defined by the number of successful UDRP complaints and the extent of trademark protection, among other factors.
Expand the scope of IP/Trademark Claims Service – IP Claims should be sent to applicants for registrations for strings at the second level which are identical and confusingly similar to a trademark in the TMCH. The service should be permanent, rather than just lasting 60 days.
Improve sanctions against registries – Registries which support domain names at the second level which feature in more than 120 URS and UDRP cases per year should be required to develop stronger RPMs or ultimately face registry suspension/financial sanctions.
Whois accuracy – Require registries to undertake annual whois accuracy audits and to cull domains with records which are inaccurate. License Whois Privacy services and require operators to respond promptly to enquiries from rights owners which should be presented through a standardised mechanism.