NEW GTLDS
Most discussion about rights protection mechanisms under the new generic top-level domain programme has focused on the mandatory measures, but several individual registries are providing their own forms of defence, as TB&I finds out.
Te battle to protect trademarks under the new generic top-level domain (gTLD) programme has been long and arduous. IP owners, led by a fear of mass cybersquatting under a vastly increased domain space, have fought tirelessly for a set of suitable rights protection mechanisms (RPMs).
As it stands, rights owners will use a Trademark Clearinghouse—not an RPM itself but a centralised trademark database that provides access to sunrise and trademark claims periods, which assist IP owners with brand protection. Tere are two new dispute resolution mechanisms, one dealing with clear cut cases of cybersquatting and the other with registry misconduct.
Te RPM debate has focused mainly on these mandatory measures, seen as the bare minimum for protecting rights. Fewer eyes have gazed down on the defensive systems that individual applicants, especially those planning to operate open registries—those open to anyone—have created.
Take Donuts Inc. Te company shocked everyone when it filed 307 gTLD applications, all of them open for public registration, at a cost of nearly $57 million. Te domain name registry is not guaranteed to run all 307 registries, as some applications are competing with others and may require an auction to separate them, but there’s no doubting the company’s resolve.
Donuts has proposed eight extra RPMs, two of which are prominent. Te first is the domain protected marks list (DPML), which will block domains containing trademarked terms across all of the company’s registries. Aſter validating a mark, Donuts will block both exact matches and domains containing marks plus other words. Te costs are not yet clear, but the company says they will be significantly less than the cost of registering a mark across all the company’s registries.
“Trademark owners have asked for this,” says Jon Nevett, co-founder of Donuts. “We have spent a lot of time talking to IP owners and law enforcement, working out what meets their needs. Te DPML came up time and time again as a helpful tool for protecting marks. We have a strong suite of measures that go above and beyond the required RPMs and those in .com today.”
Like Donuts, Minds + Machines is another big gTLD player. Elaine Pruis, chief of registry operations, says the company, which has applied for 87 open domains, may offer a similar blocking service across all its registries. It will apply only to exact matches, not trademarks plus other words.
“Tere will be costs involved,” she says. “It is not our business to earn money on trademark registrations or trademark blocks. It is much more lucrative selling domain names to people who actually want to use them. We’re talking to big marks holders such as Nestlé about what makes the most sense for their particular brand
protection strategies, and are being flexible about what companies are looking for.”
Analysing the blocking systems, Ben Anderson, head of new gTLDs at brand protection company NetNames, says on the face of it they are exactly what IP owners are looking for and that other registries should be taking a similar proactive approach.
In theory, he may be right: the option to block marks across scores of open gTLDs sounds attractive. But in practice, there may be a caveat. Brian Winterfeldt, partner at Steptoe & Johnson LLP, notes that IP owners may only benefit from blocking if the price is right. “It’s hard to know how effective these blocking mechanisms will be without knowing the price, as the mechanism is only effective to the extent that brand owners use it.”
He adds: “A blocking mechanism, similar to the globally protected marks list (a proposed but rejected RPM), however, is something that brand owners have been seeking throughout the new gTLD programme and, if inexpensive enough in relation to defensively registering domain names in each registry, it could be quite effective. Tis is particularly true of Donuts’ ‘trademark plus’ mechanism.”
Adding another note of caution, Anderson says the DPML may pose problems for two parties claiming rights to the same name. “A prime example is ‘polo’—if Ralph Lauren wants to block ‘Polo’ but Volkswagen wants to use it, who has the right?”
www.worldipreview.com
Trademarks Brands and the Internet Volume 2, Issue 1
13
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