As ICANN 52 continues in Singapore, the Internet community is discussing how effective rights protection mechanisms have been in the roll out of new gTLDs.
Unfamiliar with how new gTLDs play in to your brand protection efforts (or have a colleague that could use a refresher?
Like with our last post, let’s start from the beginning:
What is a gTLD? What is a ccTLD?
gTLD stands for Generic Top-Level Domain, which is the string to the right of the dot in a URL. You’re probably familiar with the “legacy” gTLDs, for example .COM, .NET, .ORG, and .EDU. ccTLD stands for Country Code Top-Level Domain, for example .CA (Canada), .CO.UK (United Kingdom) and .CN (China).
A “TLD” can refer to either a gTLD or a ccTLD.
What is a “new” gTLD?
Approximately 1,400 new gTLDs – .SUCKS, .LONDON, and .MARRIOTT – are in the process of joining the existing set of TLDs and ccTLDs.
New gTLDs emerged from a decision at the Internet Corporation for Assigned Names and Numbers (ICANN) – by allowing anyone with the funds and technical ability to apply for a .WHATEVER, ICANN wanted to encourage innovation and expand the choices of domain names available.
How do new gTLDs fit into your brand protection plan?
The influx of hundreds of new .GENERICS through new gTLD program has compounded the concerns of trademark lawyers and other legal professionals in several ways – whether or not their company applied for a new gTLD of its own.
If you’re already involved with brand protection management, here’s how new gTLDs are going to impact your days:
- More to monitor –
Before new gTLDs, brands had to monitor legacy gTLDs and ccTLDs for trademark infringements. The volume of these cases, especially for bigger brands with many popular trademarks, could get unwieldy at times, forcing brands to consider which of the worst trademark infringements they should pursue. Unfortunately, with the new gTLDs, there is more space to monitor, and more opportunities for trademark infringements.
- More defensive registrations –
The bigger brands are taking steps to pre-empt future legal action by defensively registering their trademarks in the high-risk, new, open gTLDs. High risk is determined by several factors, including the registry operator (for example, a Google string might gain more traction or rank higher in search listings than a string run by a lesser known registry operator) and the term’s relevance to the brand’s products.
- More URS and UDRP complaints to file –
Brands will have to find their comfort zone in terms of how much of their brand protection efforts will go to defensive registration: Some brands will be more aggressive than others by registering more domain names containing their trademarks in more new gTLDs.
However, no defensive registration strategy is 100% fool-proof.
Though the majority of the new open strings have yet to launch, we’ve already seen hundreds of Uniform Domain Name Dispute-Resolution Procedure (UDRP) and Uniform Rapid Suspension (URS) cases pursuing trademark infringements in new gTLDs. Many of these cases are being brought against a single entity for a significant number of infringements, as Steve Levy wrote about a couple weeks ago in his blog post about Yoyo.
A refresher on the difference between a UDRP and the URS:
With the UDRP, Complainants must submit sufficient evidence in support of three clearly defined elements designed to ensure that freedom of speech and other rights are upheld and protected, too. The elements, outlined in the beginning of each decision written by UDRP panelist(s), are as follows:
- The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
- Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
Quick and inexpensive (relative to the UDRP), the URS is an option if you want to pursue a crystal-clear case of cybersquatting. If you can meet the very high standard, the registrar suspends the domain name and its website until the registration expires.
This is primarily used for cases of trademark infringement in new gTLDs, but some other TLDs, such as .US, have begun to adopt the URS as well.
New gTLDs will undoubtedly present a greater opportunity for bad faith registrations of trademarked names, leading to brands protecting themselves reactively through an increasing number of URS and UDRP cases.
Is your brand protection strategy prepared to deal with new gTLDs?
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