PROTECTING BRANDS
protect their trademark rights. While the UDRP has a 10-year history, and the statistics prove its effectiveness at managing disputes in a fair and cost-efficient manner, the URS is intended to provide a faster low-cost resolution process.
Te URS will have a filing fee of $500, and a proceeding is expected to last between three and five weeks. A successful URS will result in suspension of the domain for the remaining duration of the registration, and placement of a notification of the dispute on the website. Te URS is limited to, and should be used for, clear cases of trademark infringement. While it’s difficult to predict, a number of experts estimate that up to 50 percent of the claims that are now filed as UDRP claims will be filed as URS proceedings.
Te URS is not, however, without controversy. Many brand owners have expressed concern that, even with the lower URS filing fee, the cost of pursing cybersquatters across a wide range of gTLDs will be exorbitant. Unlike under the UDRP, the domain owner may file a response up to 30 days aſter a decision has been rendered, and a registrant can seek de novo review of a URS decision. In addition, a complainant that prevails under the
“ICM’S PROCESS WAS HIGHLY SCRUTINISED AND FOLLOWED BY BRAND OWNERS AND, THEREFORE, IT SHOULD PROVIDE A GOOD MEASURE FOR HOW THE NEW PROCESS WILL PROCEED FOR OTHER gTLDs”
URS will not acquire the infringing domain name. Instead, the domain will be suspended until the end of the current registration period, and will become available for re-registration on a first-come, first- served basis, unless the complainant pays for a one-year extension to the initial suspension period.
Moreover, brand owners will still need to seek UDRP protection to address cases that are not clear infringement and those where they would like immediate control and ownership of the disputed domain name.
Will the new gTLD dispute process be effective?
Ari Goldberger is the founding member and owner of
ESQwire.com PC. In 1994, he came up with a concept to create an online Internet law firm which he called ESQwire, and registered the domain name ESQwire. com. In one of the earliest domain name disputes, the Hearst Corporation, publisher of Esquire magazine, sued Goldberger in federal court—the case settled and
ESQwire.com PC was created. Since 1996, Goldberger has been involved in domain name law and transactions. He has successfully handled hundreds of domain name disputes and represents the owners of some of the largest domain portfolios in the world.
At the September 21, 2011 International Trademark Association (INTA) conference in Washington, DC, a panel was created to discuss the effectiveness of the UDRP aſter 10 years of operation. Panellists included legal experts, registry providers, and domain registration service providers (DRSPs). It was noted that of the nearly 35,000 UDRP claims that have been filed over the past decade, the vast majority have resulted in outcomes favourable to the trademark/ brand owner. For example, as of August 2011 the transfer rate, resulting from decisions rendered in UDRP cases with the largest DRSPs, by WIPO and NAF was 86.1 percent and 87.8 percent, respectively. Additionally, approximately 20 percent of UDRP claims filed have resulted in settlement before decision.
While it has been estimated that bad faith registration of domain names costs brand owners up to $1billion annually worldwide, conference participants, who included representatives of many large branded companies, concluded that the UDRP is effective and efficient. Without the UDRP, participants would be mired in court proceedings and subject to lengthy discovery and motion practice. Based on this background,
54 Trademarks Brands and the Internet Volume 1, Issue 1
the current DSRPs should be well positioned to manage the new gTLD dispute procedures.
While brands such as Canon, Hitachi, and IBM have expressed their intention to obtain gTLDs, others view getting a gTLD with healthy scepticism. Many trademark/brand owners are likely to observe the first round of gTLD applications from the sidelines to assess how smoothly the process runs.
Undoubtedly, questions about the benefits of the new gTLDs, from a branding perspective, remain open. While the prospect of new gTLDs may unleash new opportunities, it is clear that brand owners can expect, and should prepare to address, significant increased expense as they seek to promote and protect their brands online. n
Ari Goldberger is the founding partner of the domain name law firm
ESQwire.com. He can be contacted at:
ari@esqwire.com
Jason Schaeffer is a senior associate and trademark counsel at
ESQwire.com. He can be contacted at:
jason@esqwire.com
Jason Schaeffer has been advising clients, including Fortune 100 companies, about securing and enforcing their IP rights since 1998. During the ‘early days’ of the Internet, he was responsible for implementing a trademark policing strategy on behalf of an international pharmaceutical manufacturer to protect its intellectual property for a widely known drug. Schaeffer represents ESQwire clients in connection with UDRP disputes, domain sales and escrow agreements, and with trademark applications and opposition proceedings.
www.worldipreview.com
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