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Three Ways to Protect Your Trademark During the Top-Level Domain Expansion

14 October 2013
By Cyrus Namazi

Rights protection was of key concern when forming the New gTLD Program. ICANN met extensively with IP experts and community members to determine how to support trademark holders faced with the largest expansion of the DNS, ever. The meetings resulted in a 3-pronged approach that provides rights holders with proactive and reactive means of blocking potentially infringing uses in the New gTLD Program. Rights Protection Mechanisms, as they’re collectively known, include the Trademark Clearinghouse, Uniform Rapid Suspension System and Trademark Post-Delegation Dispute Resolution Procedures. So, how can a rights holder take advantage of these advanced New gTLD Program mechanisms?

  1. Submit Your Mark to the Trademark Clearinghouse

    The Trademark Clearinghouse was designed to help rights holders across the globe protect their trademarks across all new gTLDs. It is the first centralized, international repository of trademark data for use with the DNS and it’s relatively easy to use.

    Register your mark now: http://trademark-clearinghouse.com/

    After you’ve submitted your trademark, Deloitte Enterprise Risk Services will verify the validity of your data. Once verified, associated previously abused labels can be added to the trademark record, and all valid data will be passed to another of our trusted vendors, IBM, to be entered into the Trademark Database.

    The primary benefits of registering a mark in the Clearinghouse include:

    • Sunrise Services
      All new gTLD Registries must offer a period of at least 30 days wherein trademark holders may register domain names corresponding to their marks before registration is made available to the general public.
    • Trademark Claims Services
      For a minimum of 90 days after general registration opens, a Registry must cross-reference domain name registration requests with records in the Trademark Clearinghouse. If a requested domain name matches a mark recorded in the Clearinghouse, the party trying to register the name will be notified of the match. If the registrant continues with the registration, the Trademark Database will inform the trademark’s holder or agent that the domain name has been registered.
    • Abuse Case Management
      The Registry Agreement for new gTLDs calls for a commitment from Registries to handle any and all abuse complaints and to operate in compliance with the Trademark Clearinghouse obligations.

    To date over 10,000 trademarks have been accepted into the Clearinghouse. We encourage all rights holders to take advantage of this proactive Rights Protection Mechanism.

  2. File a Claim with the Uniform Rapid Suspension System

    ICANN is introducing a new system for resolving rights infringement disputes called the Uniform Rapid Suspension System (URS). It builds upon the existing Uniform Domain Name Dispute Resolution Procedure (UDRP), but provides quicker relief for rights holders experiencing clear-cut cases of infringement in new gTLDs, and it’s less expensive.

    Learn how to file a URS claim: http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf [PDF, 168 KB]

    To date, ICANN has appointed the National Arbitration Forum and the Asian Domain Name Dispute Resolution Centre to administer URS claims. Email your questions about the Uniform Rapid Suspension System to urs-com@icann.org.

  3. Initiate the Trademark Post-Delegation Dispute Resolution Procedure

    Trademark infringement is often portrayed as being a Registrant problem (such as typo-squatters). But what if a Registry Operator were to act in bad faith? Right now there are only 22 generic TLDs, but the New gTLD Program could introduce about 1,400 new gTLDs into the DNS.

    The Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP) is one of three Post-Delegation Dispute Resolution Procedures that were developed to provide those harmed by a new gTLD Registry Operator’s conduct an avenue to file a complaint about that conduct. The Trademark PDDRP generally addresses a Registry Operator’s complicity in trademark infringement on the first or second level of a new gTLD.

    Learn how to initiate a claim: http://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf [PDF, 181 KB]

Introduction of these Rights Protection Mechanisms is just one way that ICANN and the community are laying the foundation for a more mature and expanded Domain Name System industry. The goal is not merely to create new space on the Internet; it’s to create an expansive, more secure space where ideas can flourish.


Cyrus Namazi