INTA


again, creating a serial enforcement scenario. T is remedy, and its limits, should be considered by brand owners when enforcing their marks.


Effectiveness of the RPMs


As of February 28, 2014, 29 sunrise periods were completed. T e total number of sunrise registrations is 3,308 for the 29 gTLDs, or an average of 114 for each. T is is signifi cantly lower than other sunrise launches from the last round of new gTLDs. For example, there were approximately 15,000 sunrise registrations in the .mobi gTLD in 2006, and the .asia gTLD had 32,000 sunrise registrations in 2008.


T e lower sunrise registration numbers are likely related—in part—to the fact that 25 of the recently-launched registries are run by Donuts. T erefore, brand owners may have opted to use the Donuts Protected Marks List (DPML), for which no fi gures are available, instead. It may also refl ect the niche nature of some of these new gTLDs. Ultimately, the demand for new gTLD registrations remains unclear at this stage, and partially refl ects the balancing decision trademark owners


are making to prevent trademark violations and enhance their brands.


On February 12, 2014, the fi rst successful use of the URS resulted in a fi nding that IBM, the complainant, had demonstrated by clear and convincing evidence that all of the URS standards required for disputed domain names to be suspended for the duration of their registrations had been met.


It is too early to tell whether the short time for these decisions will allow argument of fi ne points in fact or law, especially where multiple respondents or complainants are present, or where fact-based questions raising fi rst amendment defences, such as those regarding gripe sites and personal sites, are at issue.


Legal rights objections (LROs)


A district court in the US has established another useful marker on the new gTLD landscape regarding legal rights objections (LROs). T is RPM allowed brand owners


to challenge an


application for a new gTLD during ICANN’s evaluation process, which is now complete.


Del Monte was one of the fi rst cases where a US court grappled at length with a challenge to a successful LRO. In Del Monte, ownership of the ‘Del Monte’ trademark was split geographically. T e plaintiff , Fresh Del Monte, applied for the .delmonte gTLD. Its application was defeated by an LRO from the US company Del Monte Corporation.


www.worldipreview.com


“EVEN IN CASES WHERE THERE ARE LEGITIMATE COMPETING USERS OF THE TRADEMARK IN DIFFERENT TERRITORIES, THE LRO WILL NOT NECESSARILY BE SUCCESSFUL.”


Unhappy with the result, Fresh Del Monte sought declaratory judgment (i) that it had valid rights in the ‘Del Monte’ mark; (ii) that it had not violated the Anticybersquatting Consumer Protection Act; (iii) that


registering the


.delmonte gTLD would not create a likelihood of confusion; and (iv) that Del Monte Corp should withdraw the LRO.


T e court dismissed the case, on the grounds that it lacked subject matter jurisdiction and that Fresh Del Monte’s claim lacked a cognisable legal theory as a basis for relief.


T e Del Monte ruling notwithstanding, only a few LROs have been sustained, possibly due to the very high burden of evidence to overcome. Even in cases where there are legitimate competing users of the trademark in diff erent territories, the LRO will not necessarily be successful. Brand owners that have not applied for a gTLD may need to factor this in for future application rounds, along with any changes that ICANN may consider making to the LRO process.


‘dot brand’ applications


Of the 1,409 uncontested gTLD applications, 600—around 45 percent—were for brands. However, only several of these branded gTLDs have been delegated, because many trademark owners are unwilling to sign a contract with ICANN until there is a version of the registry agreement (RA) that better addresses core concerns about the control of


their ‘branded


space’. It is hoped that this acceptable modifi ed RA version will be available shortly.


A proposed ‘specifi cation 13’ to the RA,


negotiated with ICANN by the Brand Registry Group and supported by INTA and ICANN’s Intellectual Property Constituency, would make three important changes to the standard RA for qualifying ‘dot brand’ applicants:


• Provide a safeguard against immediate re-delegation of the gTLD by ICANN, should the brand owner applicant cease to operate the registry. T is would require a two-year cooling off period during which the gTLD may not be delegated to a successor without the brand owner’s consent;


• Exempt the brand registry operators from


complying with the registry code of conduct, which is intended to ensure certain safeguards for consumers in open registry spaces; and


• Allow a dot brand to use one or more registrars of its choice rather than requiring equal access to be given to all.


T e public comment period on the draſt specifi cation 13 closed at


the end of January


2014. While the majority of comments submitted were supportive, a number of parties, including INTA’s Internet committee, suggested slight improvements to the defi nition of a ‘dot brand’ and therefore greater clarity on the registries that would benefi t from these safeguards.


Evolving constituency groups


T e expansion of the gTLD space has also increased the range of new stakeholders that have an interest in ICANN’s structure and operation. For many businesses, cities, and social and linguistic community groups, this is the fi rst time they have been actively engaged with ICANN and Internet governance. For some, the desire to have a greater voice may be a contributory factor in deciding to apply for a gTLD, as ICANN’s structure has been weighted towards its contracted business partners, such as gTLD registries and registrars. T e governance structure will need to evolve to properly refl ect the global interests of its new constituents.


T e Generic Names Supporting Organization is about to undergo a review by ICANN’s board structural improvements committee. Given the range of new stakeholder interests, it would be helpful if this review considered how properly to integrate them into the structure. Some are even suggesting it is time for a completely fresh slate. 


Scott Austin, T omas Barrett and Susan Payne are members of the gTLD registry issues subcommittee of INTA’s Internet committee. For more information, contact Claudio Di Gangi at cdigangi@inta.org


Trademarks & Brands Online Volume 3, Issue 1 41


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