INTA PROTECTIVE MEASURES
Several tools are available to help brand and trademark owners
protect their rights—and their consumers—in the expanded domain name system. Scott Austin, Thomas Barrett and Susan Payne describe how they work and how to use them.
T e Internet’s domain name system is being dramatically expanded in 2014. Hundreds of new generic top-level domains (gTLDs) are open for business, with dozens more being delegated to registry operators every week.
T e expansion presents a number of issues for trademark owners and their legal advisers, who must be more vigilant than ever before at protecting their rights. T ere are, however, several tools which, if properly used and understood, will help them protect their brands and consumers.
Rights protection measures (RPMs)
T e Trademark Clearinghouse (TMCH) is the primary tool for trademark owners seeking to protect their rights in the new gTLDs. At least 26,000 marks have been registered so far. T e TMCH supports two of the mandatory RPMs in the new gTLD programme: sunrise periods and the trademark claims service.
40 Trademarks & Brands Online
Every new gTLD registry must operate a sunrise period, during which trademark owners may register exact-match domains. Given the rapid expansion of gTLDs, even organisations with extensive resources face complex choices to protect their brands and their consumers.
Trademark owners must decide whether to register domain names in a particular gTLD as a defensive tactic or to promote the trademark— or whether to use the trademark claims service, which is available for the fi rst 90 days aſt er the launch of every new gTLD.
T e trademark claims service alerts a
prospective domain registrant if the second- level domain name it seeks to register is an exact match of a TMCH record. If the prospective registrant decides to register the domain, the trademark owner is notifi ed and must decide whether to act.
Although the TMCH has indicated plans to issue notices indefi nitely, prospective registrants will
Volume 3, Issue 1
stop receiving notices beyond the fi rst 90 days (unless the gTLD registry voluntarily chooses to continue implementing the service). On February 28, 2014, the TMCH announced that more than 17,000 claims notices have been sent to trademark owners. It remains to be seen what percentage of these notices correspond to cybersquatted domain names (as opposed to a non-infringing, bona fi de registrations that may also trigger the claims notice).
To complement ICANN’s familiar Uniform
Domain-Name Dispute-Resolution Policy (UDRP), a new accelerated dispute process, the Uniform Rapid Suspension System (URS) is now available for suspending a clearly cybersquatted domain name. However, the transfer of the domain name to the trademark owner is not available as a remedy under the URS, rather the domain name is re-released into the pool of available domains aſt er it expires. Should the trademark owner not immediately secure the domain when it is re-released, it may be abusively registered
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