gTLD DISPUTES


“AN ACQUISITION THAT DOES NOT IDENTIFY THE BUYER CAN FUNCTION AS A GOOD—AND MORE CERTAIN AND POTENTIALLY CHEAPER—


SUBSTITUTE FOR LEGAL ACTION.”


domains to be registered in bad faith. Unlike the UDRP however, this procedure has many exceptions, such as diff erentiating between mere “knowledge” that infringing names exist within a registry and “affi rmative conduct” that “encourages” registrants to procure them.


T e Registry Restriction Dispute Resolution Procedure (RRDRP) applies to “community” TLDs. Among other things, ICANN requires that such TLDs are managed for the benefi t of the community which they claim to serve, and grounds for a RRDRP action may exist where a registry owner has neglected to do so.


T e Public Interest Commitments Dispute Resolution Procedure applies where a registry owner has formally adopted certain additional safeguards to help protect against fraud, IP infringement or other conduct by entering into public interest commitments (PICs), which become incorporated into the registry agreement with ICANN via specifi cation 11.


For example, a registry might have adopted certain PICs in order to secure approval for the TLD, notwithstanding concerns raised by national governments or other interests. ICANN has created this dispute procedure for when a party contends that a registry has failed to do whatever it said it would do in its PICs.


Is enforcement in country-code TLDs (ccTLDs) still important? Should I consider reallocating any of those resources or changing my approach here?


Traffi c and overall registrations to many ccTLDs could be reduced as a result of the new gTLD programme. While certain extensions—such as .ca for Canada or .au for Australia, as well as TLDs for smaller countries that carry non-geographic connotations, including Montenegro (.me), Tuvalu (.tv) and Federal Micronesia (.fm)—are likely to remain popular, trademark owners might consider


www.trademarksandbrandsonline.com


taking a second look at brand protection eff orts in territories with relatively small populations or that may have less commercial viability.


From a dispute perspective, a number of ccTLD registries now employ policies that track the UDRP word-for-word, or nearly so. Many even use the same decision providers—such as the World Intellectual Property Organization—with similar procedural rules and English-language submissions, and directly integrate UDRP case law as ‘precedent’ for their expert determinations. As a result, consolidation of ccTLD enforcement work has become easier than ever before.


If I don’t want to fi le a formal dispute (or a lawsuit), what are my options?


An infringing domain (or social networking page) can sometimes be


recovered without


taking legal action, such as by ‘stealth’ purchase where the identity of


the buyer is concealed.


While trademark owners may be reluctant to reward infringing behaviour, this strategy can be particularly useful where a registrant has a potential defence—for example, fair use or laches—or if it will sell the domain at a price lower than the cost of hiring counsel and fi ling a complaint, even if it proved successful.


Many cybersquatters are keenly aware of the fi nancial and strategic issues facing brand owners, so an acquisition that does not identify the buyer can function as a good—and more certain and potentially cheaper—substitute for legal action.


As the saying goes, “an ounce of prevention is worth a pound of cure”, and brand owners should continue to integrate proactive alternatives to dispute resolution. Along with ‘defensive’ domain registrations, use of the Trademark Clearinghouse (TMCH) can reduce policing costs by giving brand owners the ability to pre-register names in sunrise periods. T e TMCH also off ers a ‘claims’ service that can provide notice to both the brand owner and registrant about potential infringements.


Some new gTLD registries also off er ‘block list’ type services such as Donuts’s Domain Protected Marks List. T ese can actually prevent registration of infringing domains and therefore trim both policing and enforcement budgets. Such services are likely to grow in attractiveness as the domain name system continues to expand. 


Don Moody is co-founder of New gTLD Disputes. He can be contacted at: don@newgtlddisputes.com


Khurram Nizami, who helped with this article, is a staff attorney at New gTLD Disputes. He can be contacted at: kanizami@newgtlddisputes.com


Don Moody is an IP and privacy attorney based in Los Angeles. A 15-year veteran of the technology industry (with 11 as a practising lawyer), Moody has extensive expertise in brand protection, IP enforcement on the internet and (most recently) ICANN’s new gTLD programme. He has a law degree from UCLA and a Master of Science in computer information systems from Boston University, in addition to being a registered patent attorney at the USPTO.


With a substantial background in IT, Khurram Nizami brings a breadth of experience to internet IP enforcement and ICANN’s new gTLD programme.


He completed


his undergraduate studies at U.C. Berkeley and law degree at Loyola of Los Angeles.


Trademarks & Brands Online


Volume 3, Issue 2


43


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