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.

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.

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.

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.

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.

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.