Tuesday, December 28, 2010

ICANN’s Proposed Final Applicant Guidebook and the URS

I love blogs. More specifically, I love blogs that are frequently updated and well written. This blog is not where I would like it to be since I have not been posting here regularly. Whether the content is any good is not for me to decide, but I would like to write here more frequently. Alas, perhaps my blogging in 2011 will be more fruitful.

As I mentioned in my previous post, ICANN released the latest version of the DAG and is referring to it as the Final Applicant Guidebook. The public comment period was extended to January 15th at the last meeting in Cartagena. There are comparatively fewer changes to this version than previous DAGs and for purposes of clarity I will cover those in the same order of the original posts on this blog, starting with the URS. As you may recall, previous posts discussed the form of the complaint, the time line, the standard of review, and default and appeal.

Form of Complaint

As I discussed before, the IRT originally proposed a form URS complaint consisting of check boxes and limited space for comments and this aspect of the URS was rejected by the STI. The DAG subsequently instituted a 5000 word limit, excluding attachments, for the complaint and this remains the same in the Final AGB. I argued before that, if a simple check box form is not sufficient for some (eBay’s VeRO Program with its NOCI form could have been an example to follow.), then the word limit for a URS complaint should be reduced to save on legal costs, whether external or internal to the trademark holder, particularly since the URS is specifically intended to remedy clear cut cases of trademark abuse. If the difference in costs to the trademark owner is simply the difference in the filing fees between the UDRP and the URS, trademark owners may very well decide to file complaints under the UDRP instead of the URS, since the UDRP provides transfer or cancellation of the domain name, rather than suspension of the disputed domain.

Moreover, the fees associated with filing a complaint under the URS is suggested by ICANN to be $300 or about $1000 less than a filing under the UDRP for a complaint concerning one domain name. The $300 fee will likely be divided between the URS Provider and the Examiner in some proportion, but the fee structure does not leave much for either. How will a URS Provider process a sufficient volume of complaints to justify handling of such disputes? And how will the Examiners, who are supposed to have “legal background” and “trained and certified in URS proceedings,” supposed to make a determination on a lengthy complaint and, potentially, a lengthy response for something less than $300? Paragraph 7.3 of the Final AGB discusses the rotation of Examiners to discourage forum shopping, but I wonder how many forums will be interested in administering the URS under the rules as currently stated in the Final AGB.

Time Line

The Final AGB reduces the response period under the URS from 20 days to 14 days, which was the original recommendation from the IRT. As I suggested in my post in connection with the time line below, the result is a process that should take only 23 days. The URS Provider has three days upon receipt of the complaint to conduct an administrative review and then the URS Provider must notify the registry within 24 hours from the time the complaint is deemed compliant. The registry then has 24 hours to “lock” the domain name and notify the URS Provider of the locking of the domain name. The URS Provider then has 24 hours to notify the registrant of the complaint, a time line of six days. Next the registrant has 14 days from the notice of complaint to file a response. Upon conclusion of the response period or, alternatively, the receipt of a response, the URS Provider has a “stated goal” of three business days to issue a determination of the dispute, for a grand total of 23 days. The Final AGB provides for a “limited extension of time to respond … if there is a good faith basis for doing so” to be determined by the URS Provider, but, in any event, no more than seven calendar days. Furthermore, the URS Provider may issue a decision in the dispute in 14 days, rather than the “stated goal” of three business days, but no longer “[a]bsent extraordinary circumstances.” Should a URS dispute arise in which the registrant was granted a seven-day extension and the Examiner required the full 14 days to issue a decision, the total would then be 41 days from the filing of the complaint to the issuance of the decision.

Standard of Review

The standard of review remains largely unchanged with only the deletion of a reference to the fact that the standard is higher under than the URS than the UDRP, because the URS is only intended for “the most clear cut blatant case of infringing conduct.”

Default and Appeal

The rules for default and appeal under the URS also remain largely unchanged, although the time limits have been reduced from 20 days to 14 days.


Since the ICANN Board has signaled that the trademark protection issues for the expansion of new top-level domains have been resolved, it is likely this form of the URS will be one of the tools for trademark owners to use to protect their rights. I maintain that the biggest issue for trademark owners will be the internal or external costs that will be required to devote to a lengthy URS complaint. Will trademark owners and their representatives use this new dispute resolution policy or will the limited cost savings in filing fees persuade them to stick with the UDRP? And will the minimal filing fees dissuade entities from applying to become URS providers and/or qualified applicants from becoming URS Examiners? We shall see.

Friday, November 19, 2010

ICANN’s Trademark Clearinghouse

First off, last week ICANN posted its proposed Final Draft Applicant Guidebook for a 30-day public comment period leading up to the next ICANN meeting in Cartagena. This post still concerns the prior DAG, but I already had nearly 1000 words devoted to this post. So I’m publishing this anyway. I will follow up with a post on the latest version in the near future, but the short summary is there is not a lot that has changed.

The GPML was just a portion of the Clearinghouse in the IRT’s Final Report, which also included the Pre-Launch IP Claims Service and a Sunrise Registration Process. The IRT Final Report recognized that “trademark owners face a much larger threat at the second level that at the first level,” and therefore recommended a “two-pronged approach at the second level,” one for GPMs and one for “all other marks that are the subject of trademark registrations of national effect.” Since the GPML remains unlikely to come to fruition, the Pre-Launch IP Claims Service and the Sunrise Registration Process are the topic of this post.

Under the IP Claims Service proposed by the IRT, the registry of the new top-level domain is required to provide notification to the potential registrant of a domain name that identically matches a trademark listed on the Clearinghouse and the owner of said trademark. As opposed to the trademarks listed on the GPML, the other trademarks listed in the Clearinghouse would not prevent a potential registrant from registering a domain name identical to a listed trademark, provided the potential registrant:

(i) affirmatively opts into the registration of the domain name after receiving notice; (ii) represents and warrants that it has a right or legitimate interest in that domain name; (iii) represents and warrants that it will not use the domain name in bad faith as described in the UDRP; (iv) acknowledges that the registration or use of the domain name in bad faith may result in suspension under the URS, a UDRP proceeding, and/or judicial action by the appropriate trademark owner; and (v) represents and warrants that the registrant contact information provided in support of the domain name registration is valid and accurate, and acknowledges that provision of false information may result in cancellation of the registration.

The final IRT Report also provided the alternative of a “Sunrise Registration Process in lieu of” the IP Claims Service, based on Sunrise Eligibility Requirements (SERs) verified by the Trademark Clearinghouse and a Sunrise Dispute Resolution Policy (SDRP) to protect against applied-for domain names identical to domain names listed in the clearinghouse.

The STI asserted that “[n]ew gTLD registries should provide equal protection to all trademarks in the [Trademark Clearinghouse] for their RPMs, except as follows: (i) Inclusion of a trademark in the Trademark Clearinghouse from a country where there is no substantive review does not necessarily mean that a new gTLD Registry must include those trademarks in a Sunrise or IP Claims Process.” The STI inserted the “substantive review” language due to concerns that, without this substantive review requirement, some domain name registrants seeking to register domain names incorporating generic terms could abuse the Sunrise process by first registering trademarks in the Benelux and other countries, such as what happened with some .eu domains.

In the latest version of the DAG, ICANN has proposed the IRT’s option for registries of new top-level domains to protect trademark holders’ rights: either an IP Claims Service or a Sunrise Registration Process, but the two policies protect trademark registrations differently, as recommended by the STI.

The policy related to the IP Claims Service is broader: “Registries must recognize all text marks that have been or are: (i) nationally or multi-nationally registered (regardless of whether the country of registration conducts a substantive review; (ii) court-validated; or (iii) protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008.”

The policy related to the Sunrise Registration Process is narrower: “Registries must recognize all text marks: (i) nationally or multi-nationally registered in a jurisdiction that conducts substantive examination of trademark applications prior to registration; or (ii) that have been court- or Trademark Clearinghouse validated; or (iii) that are protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008.”

ICANN noted that the bifurcation in the pre-launch services was intended to address the goal of the model in the STI, “as well as those that are concerned that marks in non-substantive review countries can simply be excluded by registries from pre-launch Sunrise or Trademark Claim services.”

Therefore, all nationally or multi-nationally registered trademarks should be protected by registries using an IP Claims service, but only those trademarks registered in jurisdictions that conduct a substantive examination prior to registration are covered for registries using a Sunrise Registration Process. This substantive review requirement created quite a stir in the trademark community, but the Sunrise Registration Process also covers trademarks validated by the Trademark Clearinghouse itself. And the proposed Final Draft Applicant Guidebook provides additional definition of what these terms mean. We’ll get to that next.

Friday, October 1, 2010

ICANN Board Says NO to the GPML

Along with the URS, the IRT’s Final Report also recommended the adoption of rights protection mechanisms (RPMs) such as the IP Clearinghouse, later renamed the Trademark Clearinghouse, which included the Globally Protected Marks List (GPML) as a “tapestry of solutions” for protecting the rights of trademark owners.

To qualify for the GPML, a trademark owner would be required to submit evidence to the Trademark Clearinghouse showing ownership of trademark registrations in a certain number of countries across all five ICANN regions, including North America, Europe, Africa, Asia/Australia/Pacific and Latin America/Caribbean. The IRT refrained from specifying the exact number of required registrations and instead requested that ICANN staff to collect “relevant trademark registration data.” The IRT did emphasize that the registration thresholds “must be sufficiently high such that the marks that qualify for the GPML are actually recognized as globally protected.”

A trademark owner that registers its trademark on the GPML would benefit by, at least initially, blocking the registration of both top-level domains and second-level domains identical to the trademark by third parties. Such prevention of registration would be a boon to trademark owners that qualify for the GPML because those trademark owners would not need to register defensively in any of the new TLDs.

Unfortunately, the GPML never gained traction and was not included in volume four of the DAG. Moreover, in the Board resolutions referenced yesterday, the reasons for the exclusion of the GPML were listed as follows: “it is difficult to develop objective global standards for determining which marks would be included on such a GPML, such a list arguably would create new rights not based in law for those trademark holders, and it would create only marginal benefits because it would apply only to a small number of names and only for identical matches of those names.”

The first listed reason is understandable, as creating criteria all relevant parties agree to would be nigh impossible. The third listed reason is debatable. I have no doubt that trademark owners owning globally recognized brands would certainly not view the benefits of not having to register defensively in a slough of new TLDs as “marginal.” The second listed reason is the one I have heard the most frequently, as there appeared to be a concern that the RPMs would create new rights for trademark owners. And I wonder if the GPML didn’t suffer from its name signifying that trademarks on such a list would be protected globally. If the GPML would have instead been called the Names Overwhelmed by Squatters List or NOs List (As in, “Can I register this?” “I’m sorry that name is on the NOs List.” Clever?), would the outcome have been different? Who knows, but I think it’s safe to say the GPML is dead. We’ll move on to the remainder of the Trademark Clearinghouse next week.

Thursday, September 30, 2010

ICANN Board Reduces URS Time Line

Sorry for the delay with regard to entries connected with the Trademark Clearinghouse and the dispute resolution policies for new top-level domains. Both personal and professional issues have consumed me such that taking the time to post on this blog has proven impossible. I should be up to speed now with a post soon with regard to the Trademark Clearinghouse, hopefully tomorrow.

Nevertheless, ICANN’s board retreat has concluded and the adopted board resolutions are available here. Relevant to the posts on this blog thus far are the resolutions under the subhead “Trademark Protection.” As you can see, the Board has reduced the time a domain registrant faced with a URS complaint has to respond from 20 days to 14 days, which dovetails with the time line outlined in the Final Report issued by the IRT. As I wrote below, the time to respond to the complaint was the primary difference between the URS time line outlined in the DAG and the URS time line outlined by the IRT.

The reduced time line will benefit trademark owners who file complaints under the URS, but I still believe that the primary problem with the URS is the word count limit. Trademark owners may gain a week under the next edition of the DAG, but the primary costs associated with filing a URS will remain the same, and will be largely the same as the external legal fees or internal opportunity costs as those associated with the UDRP, which provides a stronger remedy than the URS. If the check box forms proposed by the IRT are a non-starter, then the word count limit should be sharply reduced to 1000 words, as six fewer days is unlikely to encourage trademark owners to use the URS over the UDRP.

But this is covered ground. Next up: the Trademark Clearinghouse.

Tuesday, August 17, 2010

URS Conclusions: Form of Complaint and Standard of Review

Over the last two weeks, I have discussed the URS in connection with the original proposal of the IRT and the most-recent proposal in the DAG volume four. I have posted separately in relation to the form of the complaint, the time line, the standard of review, and the issues of default and appeal. I intend to combine these postings in the form of a white paper to be available to trademark owners or others interested in such issues that may be used as reference related to ICANN’s September Board retreat and the next public meeting in Cartagena, Colombia in December, where we may very well see a final DAG.

Are the issues with the URS outlined above worthy of nearly 3000 words and counting? Arguably not. But the major concerns for trademark owners are in connection with the scale of the implementation of new TLDs, as in potentially hundreds of new strings, each one of which could pose multiple concerns for trademark owners, who are required by law to enforce said rights or risk losing them. These concerns directly conflict with those who simply want new TLDs to move forward to some form of time line. It’s clear to me that those on both sides of this issue have worked hard to find common ground and the URS reflects those efforts on both sides.

While it does not appear that the URS time line, or the process of default and appeal differ significantly in the latest DAG from those proposed by the IRT, the form of the complaint and the standard of review still require amendment. With regard to the form of the complaint, the STI unanimously rejected the use of a standard form with check boxes. But the current 5,000-word limit leaves little reason for trademark owners to use the URS rather than the UDRP, with an equivalent word count and a stronger remedy. If check boxes are a none-starter, for whatever reason, the word count limit needs to be significantly reduced to encourage trademark owners to choose the URS over the UDRP. Since the URS is only intended as a remedy for clear cut cases of trademark abuse, a 1,000 word limit should prove sufficient to prove such a case, and alleviate the internal and/or external costs to trademark owners.

Similarly, the standard of review should be returned to the clear and convincing evidence test as proposed by the IRT. The language added to the IRT does not add anything to the strong test supported by the IRT and, in fact, adds language that does not fit with the stated goals of the URS or the UDRP. Further, the “defense would have been possible” language is so vague as to be meaningless. Domain name registrants should be protected from unscrupulous URS complaint, but the URS is only intended for clear cut cases and the known and understood clear and convincing evidence test properly fits such cases.

That’s it for the URS. If you would like a copy in the form of a white paper, feel free to e-mail me at Ryan@KaatzLaw.com for a PDF copy. The newest posts over the next couple weeks will be related to the Trademark Clearinghouse and both the PDDRP and the RRDRP.

Monday, August 16, 2010

URS and Finality: Default and Appeal

This will be my final substantive post related to the URS, so it is fitting that the issue is finality. I will then post some general conclusions. The IRT report states, “[s]hould a Registrant find their domain name has been taken down after the fourteen (14)-day Answer period has passed and wishes to file a legitimate Answer to the Complainant, The Registrant may file a Default Answer to the third-party dispute provider at any time during the life of the domain name registration.”

In the public comments section of the most-recent DAG, trademark owners and those representative of trademark owners have contended that the URS is uncertain for trademark owners. In fact, the letters from Com Laude and Marques-ECTA both assert that, in the current draft of the DAG, the “[d]efaulting respondent can apply for de novo panel review for up to two years,” as opposed to the original proposal from the IRT, which only allowed for “[r]econsideration by Ombudsman or appeal to relevant court.”

But the IRT proposal for the URS specifically included a provision for the possibility that a Registrant to file a Default Answer subsequent to a finding against the Registrant under the URS, completely outside of the appeal process. Moreover, even if a losing Registrant filed a Default Answer, the time line related to the issuance of decision from the Examiner would begin to run, meaning a decision would likely be rendered within three business days and, at most, 14 business days. Finally, there have been remarkably few appeals of decisions related to abusive domain name registrations throughout the history of the UDRP. Although the DAG contemplates an appeal process, the nature of that process is left to the purview of the dispute resolution providers, ignoring the IRT’s recommendation of an Ombudsman and the STI’s recommendation to provide three-member panels on appeal. It will be interesting to see if the dispute resolution providers who contract with ICANN to provide URS services will include an appeal process and what the process may be.

Friday, August 13, 2010

URS and Standard of Review

In connection with previous posts parsing through the URS, today’s post covers the evolution of the standard of review from the IRT’s proposal to the proposed standard of review in the DAG volume 4. Pursuant to the IRT’s final report, the standard of review for decisions under the URS consists of a single paragraph:

“If the Examiner finds that all of these elements are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a decision in favor of the Complainant. If the Examiner finds that the test is not met, then the Examiner shall deny the relief requested terminating the URS process without prejudice to the ability of the Complainant to proceed with an action in court or under the UDRP.”

The “Examination Standards and Burden of Proof” contained in volume four of the DAG, on the other hand, is over a page long, single spaced. The DAG includes the language recommended by the IRT, but also adds the page-long “Standard of Review” proposed by the recommendations of the STI, none of which appears to add anything to or extend beyond the simple clear and convincing evidence test proposed by the IRT.

For example, the DAG proposal reads, “For a URS matter to conclude in favor of the Complainant, the Examiner shall render a Determination that there is no genuine issue of material fact. Such Determination may include that: (a) the Complainant has rights to the name; and (b) the Registrant has no rights or legitimate interest in the name. Of course, outside of the use of the permissible “may,” (b) does not add anything to the URS, as that is one of the three elements cobbled from the UDRP to include in the URS. And (a) is irrelevant. Neither the URS nor the UDRP has ever been used to determine whether the Complainant has rights to the disputed domain name. The URS and the UDRP are designed to provide a remedy for trademark holders against the bad faith registration and use of domain names identical or confusingly similar to marks in which the trademark holder has rights. The issue is not and never has been whether a trademark holder has rights to a domain name registered to a third party.

Furthermore, the DAG proposal states, “If the Examiner finds that the Complainant has not met its burden, or that genuine issues of material fact remain in regards to [sic] any of the elements, the Examiner will reject the Complaint under the relief available under the URS. That is, the URS Complaint shall be dismissed if the Examiner finds that: (1) evidence was presented to indicate that the use of the domain name in question is a non-infringing use or fair use of the trademark; or (2) under the circumstances, and no Response was submitted, a defense would have been possible to show that the use of the domain name in question is a non-infringing use or fair use of the trademark.”

Again, I do not see how (1) adds anything to the URS, as the “fair use” language is included in the Registrant Defenses section of the Policy. Moreover, the “a defense would have been possible” language is so vague as to be meaningless. And whatever it means, it does not appear to add significantly to the clear and convincing evidence test initially recommended by the IRT. The language in the DAG was pulled from the recommendations GNSO’s Special Trademark Issues Review Team, who appear to be seeking broader protections for domain name registrants, and domain name registrants should be protected from overreaching URS complaints. It just is not clear how this convoluted language provides stronger protection than the original clear and convincing test proposed by the IRT.

The IRT’s proposal for the URS included a strong standard of review: clear and convincing evidence. The strong test was necessary because the URS is only intended for clear cut cases of trademark abuse. The superfluous language added to that test just causes confusion and should be removed from the final draft of the DAG.

Thursday, August 5, 2010

URS Time Line

Yesterday I posted on the URS and argued that the format of the complaint should be amended to require a standard form or a significantly reduced word-count limit from the current limit of 5,000 words to 1,000 words. Today, I am going to work through the IRT draft of the URS and the most-recently proposed draft from the DAG volume four to see what sort of time line we might see when the URS goes live.

A number of trademark holders and representatives of trademark holders’ interests contended in the Public Comments to the most-recent DAG that the URS, as proposed in the DAG, is no longer rapid, as it was intended to be. Frederick Felman of MarkMonitor wrote, “[a]s it is currently prescribed, and as analyzed by at least one expert dispute resolution service provider, the URS will be roughly equivalent to the UDRP with respect to time required to adjudicate and therefore is not ‘rapid.’” Nick Wood of Cum Laude asserted that the IRT’s proposal could be completed in 21 days and the DAG proposal could take “up to 47 days,” concluding “an eUDRP can take 35 days – 12 days quicker. URS is no longer rapid.” Eric Wilber, Director of WIPO Arbitration and Mediation Center, contended, among many other concerns, that the time lines for the DAG proposal were “significant.”

According to the URS proposed in the IRT’s final draft, the URS provider has one day to forward the complaint to the relevant registry, the registry has one day to freeze the contact details related to the disputed domain name, and one day from the freeze, the registry notifies the registrant and the registrar of the filing of the complaint. The registrant then has 14 days to answer the complaint. Once the registrant submits an answer or the 14-day answer period expires, a decision is rendered by the URS-provider decision maker. All told, the IRT’s proposed process should not exceed 17 days, although the IRT did not delineate the time necessary for the URS provider to administratively review the complaint for compliance with the policy and rules before the URS provider forwards the compliant complaint to the relevant registry. The IRT’s final draft also does not indicate how much time the decision maker should have to review the filings and issue a decision.

According to the URS proposed in volume four of the DAG, the URS provider has three days to review the complaint for any administrative deficiencies and one day to forward the complaint to the registry. Just as with the IRT final draft, the registry is permitted one day to lock the domain name and one day from the locking of the domain name to forward the complaint to the registrant and the registrar. Under the most-recent DAG, the registrant has 20 days to respond to the complaint. Once a response is submitted or the response period concludes, the decision must be rendered by the decision maker within three days. Therefore, the number of days required to prosecute a complaint under the URS pursuant to the proposal of volume four of the DAG is 29 days.

The time line under the DAG is 12 days longer than the IRT’s URS proposal, but the 29 days include three days for the URS provider to review the complaint for administrative compliance prior to forwarding the complaint to the registry. The most-recent DAG proposal also delineates three days for the decision maker to render its decision. It would appear that the URS provider and the decision maker should be permitted time to administratively review the complaint and to review the filings and render a decision, respectively, and nobody appears to be arguing that three days is too long. So, if we add three days for the URS provider to review the initial complaint and three days for the decision maker to review the filings and render a decision to the IRT’s 17-day proposal, the URS should be limited to 23 days. Therefore, the primary difference between the time line of the IRT proposal and the time line of the DAG proposal is the six additional days allowed for the registrant of the domain name to respond to the complaint.

If the URS proposed by the IRT had outlined the number of days for administrative review and the rendering of the decision, the IRT proposal would have submitted a procedure that should take 23 days, or six days fewer than that proposed in the latest version of the DAG, which does not appear particularly significant. The majority of the concerns for trademark holders are not with the URS time line, but with issues related to the appeal process. I will discuss those issues in the upcoming days in a separate post, because those are significant.

Wednesday, August 4, 2010

The URS and the Form of Complaint

A while back I mentioned here that I wanted to post about the dispute resolution policies open for discussion in connection with the introduction of new TLDs. And as I also mentioned below, the comment period for the latest Draft Applicant Guidebook recently came to a close and those comments included many comments related to the various dispute resolution procedures in the fourth version of the DAG. My intent was to write posts about the URS, the Trademark Clearinghouse and both the PDDRP and the RRDRP, but I already have around 1,300 words devoted to the URS and I am only half way through the major issues. So, I plan on breaking this into chunks, starting with the URS. Over the next few days I will be posting about the format of the complaint, the timing inherent to the rules, the standard of review and the procedures for both default and appeal, but first I will discuss the format of the complaint, along with a little background on the URS for color.

The IRT recommended the inclusion of the URS to be a faster and less expensive option than the UDRP for trademark owners. The IRT asserts in its Final Report that “the UDRP has unquestionably been an important and successful mediation tool for trademark owners and domain name registrants alike.” Nevertheless, due to the fact that “brand owners face thousands of infringing websites per year,” those brand owners “spend large amounts of money to build up portfolios of domain names they do not want, simply to prevent fraud on their consumers and misuse of their brands.” The URS contains the same substantive elements of the UDRP, but “the URS is intended to address efficiently and cost-effectively the most clear cut cases of abuse,” and therefore the standard of proof is higher in the URS than the UDRP. Furthermore, the remedies available under the UDRP are either the transfer or the cancellation of the disputed domain name, while the remedy under the URS is only that the domain name is “frozen” for the remainder of the domain name’s registration period, leaving the domain name to resolve to a specific error page.

In light of the stated goal to keep costs associated with the filing of complaints under the URS down, the IRT proposed that the fees should be much lower than those fees associated with the UDRP, and more importantly that the form of complaint should consist of a standard form, complete with check boxes in connection with the various elements of the URS, along with the opportunity to provide a brief explanation with regard to the bad faith element of the policy. The form complaint contains simply the complainant’s contact and trademark registration information, along with the opportunity to insert the disputed domain names in correlation with the relevant trademarks. Check boxes were included in connection with the elements listed under the registrant’s rights to or legitimate interests in the disputed domain name, as well as the four UDRP factors related to bad faith registration and use. And a mandatory comment section is provided in the bad faith registration and use section. As opposed to the form complaint, the DAG proposal in volume four asserts that a complaint “will be simple and as formulaic as possible” and imposes a word-count limit of 5000 words, excluding attachments, which happens to be the same word limit for a UDRP complaint filed with WIPO in accordance with WIPO’s UDRP Supplemental Rules, as well as the word limit under ICANN’s proposed New gTLD Dispute Resolution Procedure, the PDDRP and the RRDRP.

While the reduced fees for the URS speak well for the cost savings for filing complaints, the word limit is of most importance because trademark owners faced with a domain name that infringes its trademark will either need to devote internal resources in the form of in-house counsel to prosecute complaints over domain names or pay legal fees in association with the use of outside counsel, and those fees or opportunity costs are often greater than the filing fees charged by the dispute resolution providers.

Pursuant to the public comment period subsequent to ICANN’s release of the DAG volume 4, a number of trademark owners and organizations representative of trademark owners complained that the latest draft of the URS was no longer as inexpensive as it was designed to be. Nick Wood, Managing Director at Com Laude, questioned the lengthiness of the URS complaint and asked, “who will afford to be a panelist? Will ICANN subsidise URS?” Frederick Felman, Chief Marketing Officer at MarkMonitor, contended that the URS “will not be inexpensive” and posited that “it is likely that the majority of brand holders will be forced to buy a domain name in each gTLD corresponding to their trademarks or will be filing requisite UDRPs as opposed to relying on the equally time consuming and costly URS process.”

Since the original intent of creating the URS was to create a faster and cheaper form of the UDRP, it appears unnecessary for the length of the complaint to be equivalent. Although some have argued that the higher standard of proof in the URS, clear and convincing evidence, rather than the preponderance of the evidence test in the UDRP, will require additional time and resources to prove, I don’t think that argument holds much water since the URS is only intended to provide relief in the “most clear cut cases of abuse.” Moreover, the nature of disputes in connection with the URS will be less complicated than those related to the UDRP, New gTLD DRP, the PDDRP and the RRDRP, and therefore the necessity of 5000 words appears lessened. And finally, in connection with the original intent of the URS to provide relief only in the “most clear-cut cases” of trademark abuse, the form complaint originally proposed by the IRT should be implemented or the word count should be greatly reduced to 1000 words, or approximately the length of this post, which should be more than sufficient to prove the clear cut cases for which the URS was intended to remedy.

Friday, July 16, 2010

Last Opportunity to Comment on New TLDs DAG May End Next Week

ICANN’s public comment forum for version four of the Draft Applicant Guidebook for new TLDs closes next week on July 21st and that date may prove to be the last opportunity for interested parties to memorialize and publicize any questions or concerns they may have with regard to the introduction of new top-level domains.

Tony Kirsch of AusRegistry has written a blog post, “A DeLorean, 88 Miles an Hour and a Fully Charged Flux Capacitor,” which is a fun read looking at the world of domain names from five years out into the future. Although the predictions may be understandably optimistic, coming from a provider of domain name registry services, the notion that we could see “approval of the final version of the Applicant Guidebook at ICANN 39 in Cartagena” as well as a “45 day registration period in early 2011,” does not appear to be overly optimistic at all.

Antony Van Couvering of Minds + Machines wrote a nice roundup of the recent ICANN meeting in Brussels called, “What the ICANN Brussels Meeting Means for New gTLDs.” At the meeting in Brussels, the ICANN Board of Directors scheduled a retreat to hash out the remaining issues in connection with the implementation of new TLDs and the piece concludes with “most indications are that ICANN’s next meeting, in early December 2010 in Cartagena, Colombia, will finally produce a starting date for new gTLDs.”

Interested parties may want to submit their comments next week, because it may be that we see a final draft later this year at the next ICANN meeting in Cartagena.

Tuesday, June 29, 2010

"Discrete, Limited Rounds?" ICANN's Economic Analysis of New TLDs

Somewhat lost in the coverage of the recent ICANN meeting in Brussels was the release of "An Economic Framework for the Analysis of the Expansion of Generic Top-Level Domain Names" on June 16th, a copy of which is available here.

The first 10 pages, comprising the Introduction and Overview and Background sections, provide a nice overview of how we got to this point and should be mandatory reading for those how are new to the issue. The Theoretical Framework section outlines the pros and cons for the introduction of new TLDs, as well as the Department of Justice's concerns that prompted the Economic Evaluation itself. The next section consists of a survey of studies conducted by Summit Strategies, Minds + Machines, Edelman and Stahura, which makes me feel better personally to know that someone else has waded through these papers.

The final section, however, is the most useful, in the sense that suggestions are made in connection with analyzing the costs and benefits of the implementation of new TLDs. The authors conclude that analysis of domain name registration volumes, domain name resale prices, and the prevalence of domain name registrants switching to new TLDs should all be given low priority. The authors do posit, however, that the increased costs to trademark owners in connection with protecting their brands through domain name registration, monitoring and enforcement should be monitored and analyzed. The authors are also concerned with the costs to consumers due to consumer confusion and fragmentation of the Internet related to new TLDs, although that is obviously not easily measured or monitored.

Finally, the authors propose "it may be wise to continue ICANN's practice of introducing new gTLDs in discrete, limited rounds. It is impossible to predict the costs and benefits of new gTLDs accurately. By proceeding with multiple rounds, the biggest likely costs--consumer confusion and trademark protection--can be evaluated in the earlier rounds to make more accurate predictions about later rounds." That does sound wise and kudos to Michael L. Katz, Gregory L. Rosston and Theresa Sullivan for contributing to the discussion. Nevertheless, when I remotely asked the panel for "Brand Management in the Age of New gTLDs" at the ICANN meeting in Brussels the likelihood of implementing new TLDs in "discrete, limited rounds," the response was mostly chuckles.

Tuesday, June 8, 2010

ManagingIP: Why Brand Owners Need New Internet Strategies

On May 26, 2010, Managing Intellectual Property published a piece titled, "Why Brand Owners Need New Internet Strategies," in relation to the recent introduction of IDNs and the planned implementation of new TLDs. While it it possible that private-party litigation or governmental interference could slow down the implementation of new TLDs, trademark owners need to recognize that new TLDs remain on the horizon. Two of the speakers referenced in the piece even recommended that brand owners may benefit from creating a special department targeted at dealing specifically with domain name issues.

MarkMonitor Surveys Corporate Clients: Majority Undecided on New TLDs

On May 20, 2010, MarkMonitor reported the results of its corporate client survey concerning its clients' intent to register a new TLD. Based on the response of 95 survey participants, MarkMonitor found that 22% intended to apply for a new TLD, 23% do not intend to apply and the remaining 55% had not determined whether to apply for a new TLD.

ICANN's Registration Abuse Policies Working Group Recommends Initiation of a Policy Development Process to Investigate the Current State of the UDRP

On May 29, 2010, ICANN's Registration Abuse Policies Working Group published its Final Report with regard to domain name registration abuse to be considered by the GNSO Council.

The 14 members of the group consented unanimously to the following recommendation:

Recommendation #1:
The RAPWG recommends the initiation of a Policy Development Process by requesting an Issues Report to investigate the current state of the UDRP, and consider balanced revisions to address cybersquatting if appropriate. This effort should consider:
How the UDRP has addressed the problem of cybersquatting to date, and any insufficiencies/inequalities associated with the process.
Whether the definition of cybersquatting inherent within the existing UDRP language needs to be reviewed or updated.

Interestingly, the 14 members of the group split evenly with regard to the second recommendation, with seven members in favor of View A and seven members in favor of View B.

View A: The RAPWG recommends the initiation of a Policy Development Process by requesting an Issues Report to investigate the appropriateness and effectiveness of how any Rights Protection Mechanisms that are developed elsewhere in the community (e.g. the New gTLD program) can be applied to the problem of cybersquatting in the current gTLD space.

View B: The initiation of such a process is premature; the effectiveness and consequences of the Rights Protection Mechanisms proposed for the new TLDs is unknown. Discussion of RPMs should continue via the New TLD program. Experience with them should be gained before considering their appropriate relation (if any) to the existing TLD space.

Wednesday, May 5, 2010

INTA in Boston? Let Me Know if You Want to Meet Up

If you're going to INTA's 2010 Annual Meeting in Boston and want to set aside some time to discuss online trademark infringement and/or the implementation of new top-level domains, send me an e-mail at Ryan@KaatzLaw.com. The meeting is only three weeks away, but past experience suggests schedules fill up quickly.

Tuesday, May 4, 2010

CNN Interviews ICANN Senior Director Regarding IDNs

Pursuant to CircleID, ICANN Senior Director, Tina Dam, was interviewed with regard to recent developments concerning internationalized domain names (IDNs). As was mentioned back in February, the first four IDNs approved represent top-level domains in Arabic, Russian and Cyrillic scripts, and therefore, trademark owners should take steps in the near future to determine whether to register domain names in these IDNs, particularly if they hold trademark registrations in Egypt, the Russian Federation, United Arab Emirates or Saudi Arabia.

Monday, April 19, 2010

Czech Arbitration Court Issues First Class Complaint Decision

The Czech Arbitration Court recently issued what appears to be the first UDRP decision that involves a domain name dispute that takes advantage of the CAC's option for multiple complainants to file a single complaint against a single domain name registrant. The case, Enterprise Holdings, Inc. & Vanguard Trademark Holdings USA, LLC v. Errol Santos, CAC 100143 (Mar. 3, 2010), resulted from Santos' registration of the enterprisediscountcodes.com and alamodiscountcodes.com domain names on November 25, 2009. According to the decision, the "disputed domain names respectively resolve to pages with headings 'Enterprise Discount Codes' with the ENTERPRISE logo and 'ALAMO Discount Code with the ALAMO logo" and further divert Internet users to websites that offer rental car services, including both the car rental services of the complainants', as well as the car rental services of the complainants' direct competitors, which evidenced bad faith registration and use of the disputed domain names.

The CAC is the only domain name dispute provider that allows for the filing of class complaints, so trademark owners should at least be aware of this option in the albeit unlikely event that a similar factual scenario should arise.

Tuesday, April 13, 2010

Revised ICANN UDRP Rules Should Result in Cheaper Filings

As of March 1st, ICANN's revised UDRP Rules no longer require hard copy filings, meaning that Complaints and Responses, including Annexes, may now only be filed electronically. While the environmental results of such a change should prove significant, the cost savings are also likely to prove substantial by reducing copying and shipping charges, particularly for those brand owners who face persistent cybersquatting.

Monday, April 12, 2010

Trademark Owners Should Plan Now for the Introduction and Implementation of New TLDs

Minds & Machines has posted a visually appealing projection of the likely ICANN time line for the introduction and implementation of new top-level domains. While delays are likely, and perhaps inevitable, trademark owners should be aware that applications for new TLDs may be expected in April of next year, with implementation of new TLDs projected for the beginning of 2012. Trademark owners must be aware of these projected deadlines and plan accordingly.

Monday, March 22, 2010

Canon Shoots for Increased Online Communication with Dot Canon TLD

Last week, Canon Inc. made an announcement that the company would seek to acquire the .canon top-level domain and use the new TLD "to increase the convenience and effectiveness of its online communications."

According to Wikipedia, the origin of the company name dates to 1934 when a prototype camera was dubbed "Kwanon" after the Buddhist Bodhisattva "Guan Yin," associated with compassion, mercy and love. Of course, the textual components of the CANON mark also represent the generic term, "canon," which is defined as the "body of ecclesiastical law" and "the body of rules, principles, or standards accepted as axiomatic and universally binding in a field of study or art." In fact, the adoption of the mark CANON sought to represent both of these concepts and thus "worthy of a company involved with precision equipment, where accuracy is fundamentally important."

Despite the recent economic downturn, Canon appears to be doing well, projecting to post an operating profit that may double the company's original projection for the quarter ending this month and acquiring recently the Dutch photocopy maker Oce. Today, Canon represents the world's largest digital camera maker and yet office imaging products and computer peripherals constitute more than 60% of Canon's sales.

So what might Canon be planning for the .canon TLD? In November 2008, MarkMonitor hosted a webinar, "Protecting Your Brand Online: From TLD to new gTLD," which may shed some light, in which three examples were suggested with regard to trademark owners might use a new top-level domain: restricted use by the trademark owner only, limited use by the trademark owner and partners, and expanded use by the trademark owner, partners and consumers.

Perhaps Canon seeks the .canon top-level domain simply to prevent the TLD's use in the generic sense as an identifier of ecclesiastical law or a body of accepted standards. Canon could register .canon and restrict its use only for simple corporate website addresses and for employee e-mail addresses, but, based on the press release alluding to "the convenience and effectiveness of its online communications," it appears Canon has bigger plans.

Canon could register .canon and make use of all these purposes and also allow the registration of .canon domain names by its authorized dealers, resellers and distributors of Canon's goods and services. Authorized dealers of Canon's consumer products, as well as resellers and distributors of its industrial and office products and services, could register domain names in the .canon TLD, which would give Canon greater control of the registration and use of .canon domain names and websites and also potentially provide consumers of Canon's goods and services with greater verification of the providers of said goods and services.

Going further, by registering the .canon TLD, Canon could, in addition to the purposes related to its partners, offer the possibility of registering .canon domain names to its consumers, particularly in relation to its digital camera business. Few practices involve the emotional attachment that many people feel in relation to the photographs they take with their cameras. Canon's registration of the .canon TLD could provide Canon's consumers with greater security and authentication for images held with a deep emotional attachment, as well as providing Canon with the ability to monitor the registration and use of .canon domain names.

All of this is conjecture, of course, but it is fun to think about. ICANN has often claimed that the introduction of new TLDs is intended to provide for greater innovation and choice in the Internet realm. As for innovation, few companies match Canon, at least as measured by having consistently finished within the top three in rankings of corporations receiving patents from the United States Patent and Trademark Office.

Tuesday, March 16, 2010

EOI Scrapped: New TLDs On Course

Last Friday, ICANN concluded its 37th Meeting with a meeting of the ICANN Board, during which the Board scrapped the Expressions of Interest or "EOI" proposal. In reading through the transcript of the discussion, it is evident that some of the members of the Board harbored reservations about the time line for the EOI, which was to progress concurrently with the implementation of the New TLD Program.

Particularly in light of the fact that the EOI proposal was intended to move the New TLD Program forward, the title of the press release announcing the resolution to scrap the EOI is at least noteworthy: "ICANN Board Stays on Course for Launch of New gTLD Program," which avers, "ICANN will continue to concentrate effort on the resolution of remaining issues and the development of operational resources for launch of the program."

For trademark owners, the next development to keep an eye out for at this point is the release of the latest incarnation of the Draft Applicant Guidebook, which should be published prior to the next ICANN Meeting in Brussels in late June. The DAG should include the three elements referenced below in a previous post: Trademark Clearinghouse, Uniform Rapid Suspension Procedure and Post Dispute Delegation Resolution Procedure, all of which we will be discussing here in detail over the next few posts.

Presumably as a first step in the latest push for the New TLD Program, ICANN will host a webinar March 17th to discuss the implementation of the New TLD Program.

Wednesday, March 10, 2010

ICANN Meetings Beget Additional Acronyms: The URS and the UDRP

As I mentioned before, I attended remotely the presentation on "Trademark Protection in New gTLDs" at the ICANN Nairobi meeting on Monday. One of the trademark protection mechanisms for domain names registered in new TLDs discussed was the Uniform Rapid Suspension System or URS.

The URS is modeled after the UDRP. In fact, the elements to be proved are largely the same:
- The registered domain name is identical or confusingly similar to a mark in which the Complainant holds a valid registration issued by a jurisdiction that conducts a substantive examination of trademark applications prior to registration; and
- The Registrant has no legitimate right or interest to the domain name; and
- The domain was registered and is being used in bad faith.

One difference is the standard of proof. Since the URS is intended only for "clear cases of trademark abuse," the complainant must prove with "clear and convincing evidence" all three elements of the UDRP.

Another difference is available remedy. If the Examiner determines that the complainant has met its burden of proof, "the domain name shall be suspended for the balance of the registration period" and would resolve to "an informational web page provided by the URS Provider about the URS," meaning, ultimately, that the domain name registration would eventually expire, rather than transfer to the complainant as under the UDRP.

Although the discussion of the URS was primarily amenable, ICANN still has an open comment period for the URS draft proposal. And while the URS was developed to provide an inexpensive and efficient alternative to the UDRP, some meeting attendees referenced the fact that domain name dispute resolution providers have proposed expedited UDRP filings and how such "fast track" UDRPs might relate to the URS.

Of course, although the URS proposal has yet to gain full approval and expedited UDRP filings are now unavailable, there remains a convergence toward less expensive and more efficient domain name dispute resolution.

Next in line: RRDRP.

Monday, March 8, 2010

An End to Hand-Wringing?

ICANN Meeting number 37 is now in full swing in Nairobi, Kenya. There are a number of presentations throughout the week that should be of interest to readers of this blog. Although there were problems with the audio feed during the meeting I attended this morning, the opportunity to participate remotely is greater than ever.

The presentation I attended was titled, "Trademark Protection in New gTLDs" and the discussion was segmented according to three topics: Trademark Clearinghouse, Uniform Rapid Suspension Procedure and Post Dispute Delegation Resolution Procedure.

We will be discussing some of these issues throughout the week in depth, but the tone of the discussion itself bears mentioning before we get into the substance of the debate. I believe the moderator of the presentation, Mike Silber, referenced this twice, but it remains worth mentioning again that there is now significant consensus with regard to the issues related to trademark protection. As I have maintained for some time now, the implementation of new top-level domains is inevitable. The time for hand-wringing has concluded and trademark owners must plan now to deal with the introduction of new TLDs.

Friday, February 26, 2010

Typosquatting: A Brief Foray

Last week, CirlceID published an article titled "Measuring Typosquatting Perpetrators and Funders," based on the study by Tyler Moore of the Harvard School of Engineering and Applied Science and Benjamin Edelman of the Harvard Business School, "Measuring the Perpetrators and Funders of Typosquatting." The study identified at least 938,000 typosquatting domain names targeting the most popular 3,264 domain names according to Alexa's website popularity rankings. Despite the implementation of theUDRP and the enactment of the ACPA, the study demonstrates that typosquatting remains a significant problem and suggests that online advertising platforms, such as Google's AdSense, are better positioned to undermine typosquatting, rather than trademark owners.

The study is a fascinating read, but the supplementary documentation may be of even more interest to trademark owners and readers of this blog. The Online Appendix features a section titled "Estimating Visitors and Advertising Costs of Typo Domains," in which the authors estimate that extrapolating their findings from the 3,264 domain names in the study to the top 100,000 most popular domain names suggests that "typo domains collectively receive at least 68.2 million daily visitors." Furthermore, based on estimates drawn from SEC filings and a Google case study, the authors "estimate that Google's revenue from typosquatting on the top 100,000 sites is $497 million per year."

Beyond demonstrating that typosquatting remains an ongoing and significant problem, the estimate of Google's revenue related to typsoquatting represents the capture that trademark owners could achieve through acquisition of domain names that represent misspellings of brand owners' trademarks as domain names. While the intrinsic value of a single typo domain name will likely be minimal, the study shows that the value of a portfolio of typos could be significant, and therefore trademark owners that employ defensive registration and online enforcement strategies intelligently to acquire typo domains could benefit from a meaningful return on investment across multiple fronts including increased web traffic, reduced consumer confusion, lessened online advertising spend and lower costs in connection with affiliate marketing.

Monday, February 1, 2010

IDN ccTLDs One Step Closer

As mentioned below, ICANN is currently in the process of approving IDN ccTLD requests and recently announced that four internationalized domain names had been approved: Egypt, the Russian Federation, United Arab Emirates, and Saudi Arabia. The languages associated with the first four IDN ccTLDs to be approved include Arabic and Russian in Arabic and Cyrillic scripts, representing another step closer for IDN ccTLDs.

From the perspective of trademark owners, important considerations include: Do the referenced nations represent significant geographic areas in which the company does business or a natural area of business expansion? Has the brand owner registered and/or used a translation or transliteration of the trademark in either of these scripts?

It was also recently announced that the registry behind the application for the Russian Federation, incorporating the Cyrillic script, intends to begin operation in March of this year.

Wednesday, January 20, 2010

Important Dates for Trademark Owners in Early 2010: Pending Introduction of New TLDs

As referenced below, this blog is intended to keep trademark owners abreast of developments with regard to the introduction of new top-level domains. With the turn of the calendar to 2010, there is a lot coming around the corner of which brand owners should be aware. It is my intent to increase the frequency of posts as developments occur, but there are a number of impending dates important to this process.

On January 27, 2010, the public comment period closes regarding the draft model for Expressions of Interest for new top-level domains. Important considerations that may effect trademark owners include:
Participation in the Expressions of Interest is mandatory. If a trademark owner chooses not to participate, said trademark owner may not apply in the first round of new TLDs.
A deposit of $55,000 is required to participate. This fee will be credited against the proposed $185,000 application fee to register a new TLD.
The $55,000 deposit is refundable only if ICANN fails to act on the introduction of new TLDs prior to approximately the end of 2011.
The potential applicant, applicant contact information and to-be applied-for TLD will be made public.

On February 4, 2010, at the Special Meeting of the ICANN Board of Directors, the Board will consider the draft and public comments, and may vote to proceed with the draft model.

Here is a list of potential participants and applicants thus far.

With regard to Internationalized Domain Names, ICANN still intends to introduce new country-code top-level domains in non-Latin scripts in early 2010. At this point, there are 16 requests for IDNs in eight languages.

To reiterate, there is a lot coming around the corner for trademark owners with regard to the introduction of new TLDs. Brand owners should be sure to pay attention to the above deadlines and any changes that may occur in the near future. The intent is for this blog to serve as a clearinghouse of information and updates for trademark owners concerned with these issues.