The New Generation of Multi-Level Internet Real Estate

By Scott Austin
March 10, 2015

Internet and domain names concept2014 witnessed dramatic expansion in Internet Domain Names. Applicant’s ranging from entrepreneurs to Fortune 500 businesses were delegated the authority by the Internet Corporation for Assigned Names and Numbers (ICANN) to operate registries for new top level dots. Once under contract with ICANN these new registry operators are licensed to sell through registrars, second level names to the left of new TLDs such as .photo, and .dance, as well as non-ASCII internationalized domain names (IDNs) in Arabic, Cyrillic and Chinese characters, with dozens more being delegated to registry operators every week.[1]

But more importantly to brand owners, each new TLD multiplies the opportunity for the unscrupulous to cybersquat, typosquat, infringe and dilute their flagship brand. Here are 10 key tools for whacking each mole when you find it.

1.  ICANN’s New gTLD Page

ICANN is where new TLDs are born or at least “delegated” into existence. One of ICANN’s founding tenets is transparency and given the complexity of ICANN’s web sites, you can spend days wandering around. The above link, which provides a reverse chronological list of delegated new TLD characters or “strings,” represents a good place to start.   As ICANN puts it: After completing the New gTLD Program, a new gTLD becomes part of the Internet when it is delegated. This means it is introduced into the Internet’s authoritative database, known as the Root Zone.” The applicant for the TLD, if successful, is knighted a registry operator at delegation and enters into a Registry Agreement for the TLD.

Starting at the source helps gain perspective and insight of new sunrise periods, auctions and other information affecting additional places brand owners need to search for brand imposters and infringers.

2.  Google YOUR BRAND

My trademark counsel friends at the world’s best known search engine cringe when I use their mark as a verb, however, “Google your mark early and often” should be part of every marketing director’s business day. If the results take you to sites with addresses totally unrelated to your domain name portfolio, or shows your product or service affiliated with a competitor or unauthorized seller, proceed to the step 4. If you mark is the only item on the page   in a language or characters you understand, run to step 8.

3.  Trademark Clearinghouse

Strongly consider registering your mark with the Trademark Clearinghouse. Although it is not a free service, as an initial step to ensure that a brand owners’ rights were protected as the Internet expands, ICANN (with the help of trademark lawyers around the world) created the Trademark Clearinghouse (TMCH). The TMCH is the key new TLD “rights protection mechanism” or RPM that uses a repository of brand owner trademark rights information as an enforcement tool. As of late February 2015, almost two years after startup, there were over 34,000 registered trademarks recorded with the TMCH. Unfortunately, while listing in the TMCH does not absolutely block registration by a third party of a brand owner’s mark, it is a prerequisite for the two mandatory pre-launch RPMs: eligibility for Sunrise registration and trademark claims.

Despite lobbying efforts to establish the TMCH as a blocking mechanism, TMCH registration merely alerts an end-user when the second level domain they want to grab during the first 90 days of general availability matches a brand owner’s TMCH registered mark. If the end-user decides to proceed, the trademark owner is then notified and must decide whether to act. The point is, however, without registering your brand on the TMCH, you will never receive the notice. On the other hand if you do wish to obtain an absolute block – see step 5.

4.  Check the URS

Take a look at cases under the TLD Uniform Rapid Suspension (“URS”) System, the database of new TLD brand disputes, to see whether your industry has been targeted by cybersquatters. The URS is the new accelerated dispute process that all trademark owners can use to quickly take down a domain name that is cyber-squatting on their brand through a new TLD second level domain. The URS is not a good choice, however, if: 1) you want to force the domain name to be transferred to you; 2) there are any possible legitimate arguments in favor of the respondent; or 3) you only have common law trademark rights. So although it is an accelerated process, its relief is limited; the only remedy a URS panel may grant a successful complainant is the temporary suspension of a domain name for the remainder of the registration period. For a better solution at recovery including compelling transfer of a cybersquatting domain name, consider the UDRP option in step 8 below.

5.  DONUTS to block infringing registrations:

Signing up for Donuts’ Domains Protected Marks List or DPML will actually block conflicting infringing domain names for each of those registries that have committed to this level of RPM. For $2895 the company will block a second level domain that conflicts with your mark for each of its several hundred TLDs for a period of 5 years.

6.  Check the International Trademark Association (INTA) (membership required)

A trade association for brand owners and lawyers who represent them, as an INTA member you have a substantial body of resources on protecting brands from TLD abuses, using the TMCH, RPMs and proactively participating in the TLD application process. INTA’s web site links, although requiring membership, discuss the blocking of TLDs at the development stage as well, with legal rights objections.

7.  Visit the World Intellectual Property Organization’s page on resources for dealing with TLDs

Besides being one of the largest dispute resolution providers on UDRP matters, WIPO, is also the exclusive arbitrator of Legal Rights Objections, which can be used to prevent an application from turning into a TLD. Their oversight of pending cases on LROs can be found HERE.

This may be of interest if a TLD still in the making is especially important to your industry.

8.  Check for UDRP Cases Involving gTLDs with a fact pattern similar to yours.

WIPO’s database of 28,000 panel decisions on UDRP domain dispute cases going back to 2000 covers many fact patterns that would also apply in a new TLD context and should be searched for both the parties to see if a serial cybersquatter is again at work, that may help your case as a complainant, or to see what evidence, if referenced, would be useful to protect your brand in similar circumstances. The UDRP may also be used for appeals of URS decisions.

9.  Seek effective assistance from third party technical specialists: Investigators, Domain Researchers, and Content Monitors

While many brand owners have IT departments and technical talent available, they should be familiar with the evidentiary requirements used in UDRP or URS proceedings, and the factors from online search specialists to prove infringement or dilution. Tracking and identifying a defendant, and determining the true identity of a cybersquatter or infringer, requires experience with both technical and legal requirements, and should be done under the direction of counsel. A good place to start for baseline technical data beyond mere whois would be services such as Domain Tools, safelife.com, and reputation.com for monitoring online activity that could be rerouting online customer traffic or counterfeiting your brand.

Domain tools has been a leader at researching and investigation domain ownership with reverse whois and reports on multiple domains owned by the same party.

Safenames has broad resources to assist in domain name portfolio management and protection, as well as investigative resources targeted at new TLDs.

Reputation, focuses on minimizing the impact of negative online content and could be useful to minimize the effects of cybersquatting until the adverse site or domain can be removed.

10.  Specialized legal counsel: Any brand protection system should have legal counsel experienced in both the technical (programming or online security) and legal (IP, Internet Law) disciplines impacting online brand protection. This area of the law, like the technology, is constantly evolving. In selecting counsel, consideration should be given to counsel who have kept up with these changes through years of experience focusing their practice on technology law disputes. Their insight adds an advantage to target the legal and technical contributions to develop the best strategies toward winning a case against online assailants.

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[1] TLD statistics as of February 15, 2015: Applications receiving ICANN’s invitation to contract to operate a TLD: 1225; Registry Agreements Executed 816; New Registries already live on the internet: 517; New Registries that have published Sunrise Dates: 392

The Author

Scott Austin

Scott Austin is a Board Certified Intellectual Property Lawyer at VLP Law Group, LLP with over 30 years experience in IP and technology law disputes involving internet, patent, trademark and copyright law. He has a background in computing and online security and has represented online business clients from manufacturing to media to retail in a broad array of industries all over the world. He can be reached at saustin@vlplawgroup.com

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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