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Protect Your Brand From CybersquattingRight now, we are
witnessing what an executive at the Internet Corporation for
Assigned Names and
Numbers (ICANN)called the biggest change to the Internet since
its inception. As ICANN begins
launching new generic top-level domain (TLD) extensions, well no
longer be limited to addresses
ending with .com, .net, and other already familiar TLDs. Well
see .clothing, .food, .sport, and many,
many more. Some people are hailing the new launches as a huge
win for consumers, while others
decry the oncoming juggernaut as asignificant threatto the
rights of brand owners. The scope of this
TLD launch, its reception by the internet community, and,
ultimately, its success or failure all remain
to be seen. What is certain is that businesses, brand owners,
and other stakeholders need to be
informed of these changes and take steps to prepare
themselves.
It might surprise you to hear that, even prior to this current
expansion, there were 21 generic TLD
extensions in place. The domain space was expanded by ICANN in
the mid-2000s to include various
extensions that turned out not to be very popular, such as .jobs
and .mobi. But now, ICANN is working
in partnership with various stakeholders to allow for the
creation and delegation of what many say will
be hundreds of new TLDs. Over the next few years, we can expect
TLDs to incorporate generic terms
like .book, .clothing, and .diamonds.
Allowing these new TLDs will give many companies and individuals
better options for registering their
marks, names, and other designators as second-level domain names
(to the left of the dot). For
example, imagine that Bob owns a business in Boston called
Vintage Clothing. In setting up its
original website, he was disappointed to find that
vintageclothing.com was unavailable and even
bobsvintageclothing.com was taken, so he settled for
bobsvintageofboston.com. Now, he has thechance to register
bobsvintage.clothing or even vintage.clothing.
The problem, of course, with more naming options is more
opportunity forcybersquatting.Thus there
is tension between the benefits of more domain extensions and
the threats to trademark owners
ability to protect their marks from infringement. Heres what you
should know about how ICANN
hopes to prevent and fight cybersquatting and infringement,
through the establishment of two rights-
protection mechanisms:
The first is a system that enables trademark owners to
pre-register domain names under each new
TLD that correspond to their registered trademarks. The mark
owner must first submit proof of its
rights to an entity ICANN created, the Trademark Clearinghouse
(TMCH). Once those rights have
been verified by the TMCH, the mark owner will be eligible to
register domain names that are an
identical match to its registered mark during sunrise periods
periods of at least 30 days before
registration for a given TLD is opened to the general public.
This process is designed to give brand
owners a key advantage over potential cybersquatters trying to
register infringing domains.
Sending proof of rights to the TMCH provides an additional
benefit to brand owners. If someone
attempts to register a domain name during the general
registration period under any new TLD, the
mark owner will receive notification of the attempt, and the
registrant will be shown a cautionary noticethat their registration
may violate the brand owners trademark rights. The domain
registrant can still
http://www.icann.org/en/abouthttp://www.icann.org/en/abouthttp://www.icann.org/en/abouthttp://www.zdnet.com/ready-or-not-here-come-the-new-internet-top-level-domain-names-7000025744/http://www.zdnet.com/ready-or-not-here-come-the-new-internet-top-level-domain-names-7000025744/http://www.zdnet.com/ready-or-not-here-come-the-new-internet-top-level-domain-names-7000025744/http://en.wikipedia.org/wiki/Cybersquattinghttp://en.wikipedia.org/wiki/Cybersquattinghttp://en.wikipedia.org/wiki/Cybersquattinghttp://en.wikipedia.org/wiki/Cybersquattinghttp://www.zdnet.com/ready-or-not-here-come-the-new-internet-top-level-domain-names-7000025744/http://www.icann.org/en/about
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proceed with registering the domain, as there is no automatic
blocking. However, they will have been
put on notice, which could help the brand owners case in a later
challenge to that do main registration.
Brand owners should be aware that there is an annual fee to use
the TMCH, and they will also be
charged a fee set by the registrar to register any domain names
during the TLD sunrise periods.
A second rights-protection mechanism implemented by ICANN is the
Uniform Rapid Suspension
(URS) system, a mechanism through which brand owners can contest
the registration and use of a
domain name that is identical or confusingly similar to its
trademark.
The URS is designed to be a speedy and cost-effective
proceeding, with a shorter duration and
significantly lower filing fees than current domain dispute
remedies such as the Uniform Domain-
Name Dispute-Resolution Policy(UDRP). Although not appropriate
for all disputes, the URS can offer
brand owners some significant advantages when used as part of an
overall brand-protection strategy.
As with the current UDRP, adjudication of a URS dispute is
handled by an authorized dispute
resolution provider. Unlike the UDRP, however, a successful URS
complaint will result only in the
challenged domain names suspension, termination of the
registrants control over the domain, and
the disabling of any website or other services or content
associated with the domain name. The URS
will not provide for transfer of the disputed domain name to the
trademark owner, and the brand
owner will not be permitted to use the domain name while it
remains in suspension during the duration
of its registration term. If the brand owner wants to take
ownership of and use the disputed domain, it
should instead pursue a UDRP proceeding or other legal action.
The essence of the URS, which is
designed for clear-cut cases of cybersquatting where there is no
genuine dispute over the facts, is inits speed and simplicity.
In addition to the URS, trademark owners can also utilize the
currently available UDRP and litigation
in federal court under the Anti-Cybersquatting Consumer
Protection Act to resolve domain disputes.
Each of these available options provides for somewhat different
relief, and the choice of which to
select will depend on a variety of factors. Brand owners should
consult with counsel to discuss which
may be the best option for the particular situation.
The expansion of the domain name space will create new
challenges, but it also presents positive
opportunities for businesses and individuals to stake new ground
online. Provided that you, as a
brand owner, are aware of your options, you should be able to
navigate the expansion to your
advantage.
http://en.wikipedia.org/wiki/UDRPhttp://en.wikipedia.org/wiki/UDRPhttp://en.wikipedia.org/wiki/UDRPhttp://en.wikipedia.org/wiki/UDRPhttp://en.wikipedia.org/wiki/UDRPhttp://en.wikipedia.org/wiki/UDRP
