How to Protect your Brand y in the new .world Kristine Dorrain

Transcription

How to Protect y
your Brand
in the new .world
Josh Burke
Caroline Chicoine
General Mills
(763) 764-5524
Josh.Burke@genmills.com
Fredrikson & Byron, P.A
(314) 991-8486
cchicoine@fredlaw.com
© 2012 Fredrikson & Byron, P.A.
Kristine Dorrain
National Arbitration Forum
(952) 516-6465
kdorrain@adrforum.com
Domain Names 101
<Second Level Domain> . <Top level domain (TLD)>
Example: generalmills.com
ICANN (Internet Corporation for Assigned Names and Numbers)
Registry – entity that operates the TLD
Registrar – entities with whom Internet users register domain names in a TLD
RPMs (Rights Protection Mechanisms)
The Numbers
Today – 21 gTLDs
Bad News 
1930 new gTLD applications received by
ICANN (1409 different strings)
Good
G
d News
N

Cannot add more than 1,000 gTLDs/year
New gTLD Stats
Standard Applications – 1846
Community Applications – 84
Applications in a Contention Set - 751
Total IDN Applications – 116
Total Scripts - 12
.brand gTLDs
Generic gTLDs
.APP (13)
.INC (11)
.HOME (11)
.ART (10)
.SHOP (9)
.LLC (9)
.BOOK (9)
.BLOG
BLOG (9)
.MUSIC (8)
.MOVIE (8)
.DESIGN (8)
.WEB (7)
.STORE (7)
.NEWS (7)
.MAIL (7)
.LTD (7)
.LOVE (7)
.HOTEL (7)
.CLOUD (7)
.VIP (6)
.TECH (6)
.ONLINE (6)
.NOW (6)
.LAW (6)
.GMBH (6)
.CPA (6)
.CORP (6)
.BABY (6)
.TICKETS (5)
.STYLE
STYLE (5)
.SITE (5)
.SALE (5)
.GROUP (5)
.GAME (5)
.FREE (5)
.BUY (5)
.VIDEO (4)
.TENNIS (4)
.TEAM (4)
.SOCCER (4)
.SHOW (4)
.SEARCH (4)
.SCHOOL (4)
.SALON (4)
.RESTAURANT (4)
.REALESTATE (4)
.RADIO (4)
.POCKER (4)
.PLAY (4)
.PIZZA (4)
.MED (4)
.LLP
LLP (4)
.INSURANCE (4)
.IMMO (4)
.HEALTH (4)
.GREEN (4)
.GOLF (4)
.GAY (4)
.FLOWERS (4)
.FASHION (4)
.ECO (4)
.CHAT (4)
.CASINO (4)
.BET (4)
.AUTO (4)
Courtesy of BrandShield - http://www.brandshield.com/en/NewgTLDApplicationReport.aspx
Courtesy of BrandShield - http://www.brandshield.com/en/NewgTLDApplicationReport.aspx
New gTLD Process
From ICANN Applicant Guidebook,
Guidebook Module 11, Page 1-4
1-4.
Timeline for Dispute Resolution
att the
th TTop Level
L l
Dispute Resolution at the Top Level
Public comments
(1) whether the applied-for gTLD string is
likely to cause security or stability problems in
the DNS
(2) whether
h th the
th applicant
li
th
has th
the requisite
i it
technical, operational, and financial
capabilities
biliti tto operate
t a registry
i t
Example of Public Comments
•
Xerox Corporation
After a preliminary evaluation of this application, Xerox Corporation is of the
opinion that the inclusion of additional safeguards would improve the operation of
this applied-for new gTLD based upon the proposed mission and purpose cited in
thi application.
this
li ti
While
Whil th
there iis no one-size-fits-all
i fit ll solution
l ti regarding
di Ri
Rights
ht
Protection Mechanisms given the diverse range of proposed applications
received by ICANN, Xerox Corporation believes that there are some potential
best p
practices that have begun
g to emerge
g in connection with applications
pp
received. For example, over 400 applications have incorporated some type of
perpetual block mechanism or Domain Protected Marks List (DPML).
By submitting this comment, Xerox Corporation wishes to highlight the need for
the ICANN community to engage in an ongoing discussion regarding appropriate
proactive safeguards in new gTLD applications.
Dispute Resolution at the Top Level
Formal Objections
• String Confusion - the applied for gTLD string is confusingly
similar to an existing TLD or to another applied-for gTLD string
• Limited Public Interest – the applied for gTLD is contrary to
general principles of international law for morality and public
order
• Legal Rights - the applied-for gTLD string violates the legal
rights of the objector
• Community - there is substantial opposition to the gTLD
application from a significant portion of the community which
the gTLD string is targeting
RPMs at the Top Level
L l Ri
Legal
Rights
ht Objection
Obj ti (LRO)
Applies where the potential use of the applied-for gTLD by the applicant:
( ) takes unfair advantage
(i)
g of the distinctive character or the reputation
p
of the
objector’s registered or unregistered trademark or service mark (“mark”) or
International Government Organization (IGO) name or acronym; or
(ii) unjustifiably impairs the distinctive character or the reputation of the
objector’s mark or IGO name or acronym; or
(iii) otherwise creates an impermissible likelihood of confusion between the
applied-for gTLD and the objector’s mark or IGO name or acronym.
L l Ri
Legal
Rights
ht Objection
Obj ti (LRO)
• St
Standing
di – the
th rights
i ht h
holder
ld (i
(includes
l d common llaw marks)
k )
• Dispute Resolution Provider - WIPO
• Fees: $10,000
$10 000 USD
2,000 administrative fee
$8,000 panel fee (refundable to prevailing party)
• Language: English
• Word/Page Limits – 5,000 words or 20 pages, whichever
less
• Response due 30 days after Complaint initiated
• Decision
D i i approximately
i t l 45 d
days after
ft response fil
filed
d
C
Community
it Objection
Obj ti
Applies where there is substantial opposition to the gTLD
application from a significant portion of the community to which
the gTLD string may be explicitly or implicitly targeted.
C
Community
it Objection
Obj ti
For an objection to be successful, the objector must prove that:
• the community invoked by the objector is a clearly delineated
community; and
• community opposition to the application is substantial; and
• there is a strong association between the community invoked
and the applied-for gTLD string; and
• the application creates a likelihood of material detriment to
th rights
the
i ht or llegitimate
iti t iinterests
t
t off a significant
i ifi
t portion
ti off the
th
community to which the string may be explicitly or implicitly
g
targeted.
C
Community
it Objection
Obj ti
• Standing – an established institution associated with a
clearly delineated community
• Dispute Resolution Provider – International Chamber of
Commerce (ICC)
• Fees: Expensive!
• Language: English
• Word/Page Limits – 5,000 words or 20 pages, whichever
less
• Response due 30 days after Complaint initiated
• Decision - at least 90 days after response filed
Existing Dispute Resolution
M h i att th
Mechanisms
the SSecondd LLevell
• UDRP
• Thick Whois requirement for all new gTLD applicants
• Whois Data Problem Reporting System
htt // d
http://wdprs.internic.net/
i t i
t/
• Non-compliance of ICANN accredited Registrar
http:reports.internic.net/cgi/registrars/problem report.cgi
http:reports.internic.net/cgi/registrars/problem-report.cgi
• Non-compliance of ICANN Registry
send detailed email to compliance@icann.org
• UDRP Intake Form
http://www.internic.net/UDRPIntakeReportSystem.html
One of these things
isi nott lik
like th
the others
th
New Dispute Resolution
M h i att th
Mechanisms
the SSecondd LLevell
• Trademark Clearinghouse (Sunrise, Trademark
Claims)
• Uniform
U if
R
Rapid
id S
Suspension
i (URS)
• Trademark Post-Delegation Dispute Resolution
Procedure (PDDRP)
• Registry Restrictions Dispute Resolution
Procedure (RRDRP)
Trademarks
Trademarks Clearinghouse Clearinghouse
(TMCH)
Josh Burke
General Mills
What is it?
What is it?
• A centralized repository for brand owners to register their rights What it does
What it does
• Gives you access to sunrise registrations
• Gives you access to the trademark claims process
What it does not do
What it does not
• Register your brands as domains
• Keep anyone else from registering your brands as domains
Sunrise Registration
Sunrise Registration
• Registration of domains before they are made generally available
• All new domains will have at least a 30‐day sunrise period
Trademark Claims
Trademark Claims
• Notification to claimants when a domain matching your mark is filed during the start‐up period
• Notice to applicant of your rights
• All new domains will have at least a 60‐day claims period
All new domains will have at least a 60 day claims period
What can you register?
What can you register?
Marks that are:
•
•
•
•
Registered;
Recognized by a court of law;
Protected by statute or treaty; or
Protected by statute or treaty; or
“Another mark that constitutes intellectual property”
What can’tt you register?
What can
you register?
Protections apply only to IDENTICAL matches
• cascadian‐farms.web
• verison.mobile
• delta‐airlines.app
delta airlines app
Do I have to prove use of my mark?
• Not required to record marks
• Not required to participate in the Trademark Claims process
• Required for Sunrise registrations
How do I prove use of my mark?
How do I prove use of my mark?
• A signed declaration; and
• A specimen of use • Requirements apply regardless of requirements imposed by the applicable trademark office
the applicable trademark office
• Proof of use not to be required annually; ICANN suggests every five years
How much will it cost?
How much will it cost?
•
•
•
•
Registration on the TMCH is projected to cost $150 per mark
Separate fees for sunrise registration
Fees for appeal of certain decisions
Renewal fees lf
How long does a registration last?
• Annual renewal
• Records can be removed from the TMCH for failure to renew or for loss of underlying rights
Appeals
• Grant or denial of registration on TMCH
• Grant or denial of sunrise registrations
• Whether a Claims notice was erroneously sent/not sent
Problems with the TMCH
Problems with the TMCH
•
•
•
•
Time limitations
Restriction to identical marks
Costs
L k f
Lack of a permanent solution
l i
New gTLD Dispute Resolution
at the
t e Second
Seco d Level
e e
Date September 21, 2012
Presented By: Kristine Dorrain
Director, Internet and IP Services
Types of disputes
Disputes over trademarked words
At the second level
Brand.gTLD
Brand descriptor.gTLD
Brand+descriptor.gTLD
Barnd.gTLD (typo)
These are not bulk methods of p
protection, but apply
pp y
to single instances of infringement; though disputes
may, in many cases, be aggregated.
Dispute Resolution Mechanisms
UDRP
Uniform Domain Name Dispute Resolution Policy
Incumbent policy; tested with six providers over twelve years and tens
of thousands of disputes
URS
Uniform Rapid Suspension System
New policy; based on UDRP, designed to improve it
PDDRP
Post-Delegation Dispute Resolution Policy
May be used against a registry that is complicit in infringement.
RRDRP
Registry Restrictions Dispute Resolution Policy
Applies when a Registry is not sticking to the limitations it has agreed
upon with ICANN, regarding who can register.
UDRP
Rapid dispute resolution process for cybersquatting.
Avg 45 days to resolution
Doesn’t apply to disputes other than TM disputes
St
Streamlined
li d e-process (email
(
il or portal)
t l)
http://www.icann.org/en/help/dndr/udrp/policy
URS
Rapid dispute resolution process for cybersquatting
Avg 30 days to resolution
Doesn’t apply to disputes other than TM disputes
(marks must be registered or validated with TMCH)
Streamlined e-process
“F
“Form”
” complaints
l i t and
d responses
Incomplete, draft policy only (no rules or
implementation available yet)
http://archive.icann.org/en/topics/new-gtlds/ursclean-19sep11-en.pdf
p
p
Highlights: How UDRP and URS
Compare
URS
Comp.
filed
2 days
Admin.
Review
Same
day
Lock
request
q
Same
day
Resp.
Served
14 days
Exam
3 days
Determination
30 days
to 6
months
th
Late
Resp.
p
14 days
Appeal
Approx.
3-4
3
4 wks
Final
Decision
(20 200
(20-200
days)
UDRP
Comp.
p
filed
3
days
Lock
request
1-15
days
Admin.
Review
1-5
days
Resp.
p
Served
20
days
Exam
14
days
Final
Decision
(30-45
days)
Compare
The Complaint
UDRP
URS
Fees set by the Provider and refund ability is left to Provider
discretion
Fees “suggested” by ICANN to be around $300; fees nonrefundable.
C
Complaint
l i t can b
be as d
detailed
t il d as necessary
C
Complaint
l i t iis ““simple
i l and
d fformulaic”
l i ”
Registered and common law marks form basis for disputes
Registered marks that can show use, marks validated through
court, and marks protected by statute or treaty form basis of
dispute
N prooff off use required
No
i d
P f off use (or
Proof
( TMCH validation)
lid ti ) required
i d
Bad faith registration AND use required
Bad faith registration AND use required
Compare
Prior to Commencement/Service
UDRP
URS
Complainant required to serve Respondent; at least two
Providers require
q
service upon
p Registrar
g
Complainant doesn’t serve Respondent
Provider typically notifies Registrar of dispute in attempt to “lock”
the domain immediately upon filing and will do the full
compliance check when the lock is confirmed. Registrar is not
expressly
l required
i d tto reply.
l
Provider notifies Registry of dispute when compliance check is
complete; registry required to lock domain name within 24
hours.
Compliance check occurs within three days and Complainant
has five days to rectify administrative filing errors
Compliance check occurs—Complaint is dismissed if there are
administrative errors fatal to the filing.
Complaint served upon respondent (case is commenced) by
Provider after administrative deficiencies are remedied.
Complaint is served upon respondent (case is commenced) by
Provider after lock is confirmed.
Compare
Response
UDRP
URS
Respondent has 20 days to respond
Respondent has 14 days to respond
Respondent doesn’tt pay to respond
Respondent doesn
pay to respond
Respondent pays to respond where there are fifteen or more domain Respondent
pays to respond where there are fifteen or more domain
names in dispute.
Provides a similar list of defenses; calls out uses that are specifically NOT bad faith absent other information, such as holding a large portfolio of domain names or engaging in PPC marketing
If the Response is late, the domain name will go back to resolving to
If the Response is late, the domain name will go back to resolving to the original IP Address, until a new Determination (de novo) is issued.
A response may be filed up to 30 days after a Determination (decision) at no additional charge (if one has not been filed yet). A response may be filed up to six months after that, for a fee. (A six month extension is also permitted.)
p
)
Response fee is refundable to the prevailing party.
Provides a non‐exhaustive list of defenses for Respondent
No late Response
No late Response
Once the decision is issued, no further submissions are considered.
Compare
Panel Appointment
UDRP
URS
Either party can request (and pay for) a three‐member panel
No three member panel option
Burden of proof not specified, but is typically considered to be “preponderance of the evidence.”
Outcome, if “for complainant” is complainant‐elected transfer or cancellation.
Burden of proof specified as “clear and convincing evidence.”
Allows for a finding of Reverse Domain Name Hijacking if complaint All
f
fi di
f
i
Hij ki if
l i
was brought frivolously.
Outcome is suspension of the domain names for their remaining term and redirection to a page indicating that the name was subject to a URS dispute. Complainant can extend the suspension for a year.
All
Allows for a finding of abuse or “deliberate material falsehood.” f
fi di
f b
“d lib
i lf l h d”
Penalties limiting or forbidding future filings under the URS apply. Findings appear to attach to complainant, not counsel.
Compare
Appeal
pp
UDRP
No appeal
No appeal
Subsequent process limited to litigation
URS
Appeal permitted by either party:
Appeal
permitted by either party:
Additional fee
New panelist (single)
Only evidence pre‐dating the original complaint may be submitted.
Appeal must be filed within 14 days
Appellee must Respond within 14 days
Appellee must Respond within 14 days
Remainder of the process left to Providers
Parties may file a UDRP or pursue litigation if unsuccessful in URS
Special Policies for Special Situations
TRADEMARK POST-DELEGATION DISPUTE
RESOLUTION PROCEDURE (TRADEMARK PDDRP)
http://archive.icann.org/en/topics/new-gtlds/pddrp-clean19sep11-en
19sep11
en.pdf
pdf
Where a new gTLD registry operator has, through “affirmative
conduct,” so managed the gTLD that either the TLD itself, or
domain names in the second level
level, infringe the complainant’s
complainant s
marks. It is not enough that a registry knows of infringement, but
that “a registry operator has a pattern or practice of actively and
systematically
y
y encouraging
g g registrants
g
to register
g
second level
domain names and to take unfair advantage of the trademark to
the extent and degree that bad faith is apparent.”
Special Policies for Special Situations
REGISTRY RESTRICTIONS DISPUTE RESOLUTION
PROCEDURE (RRDRP)
http://archive.icann.org/en/topics/new-gtlds/rrdrp-clean-19sep11en pdf
en.pdf
“Escalation policy” for when a complaint to ICANN that a
community-based TLD is not abiding by its announced
restrictions is not remedying the problem
problem. The remedies are
recommendations that the Expert Panel makes to ICANN
regarding what action ICANN should take against the registry, if
any.
y
Whois
Good News 
G
Thick Whois required for all new gTLD applicants!
Bad News 
Does not apply to .com (yet!)
Thin Whois record
Domain Name: ICANN.COM
Registrar: REGISTER.COM, INC.
Whois Server: whois.register.com
Referral URL: http://www.register.com
Name Server: A.IANA-SERVERS.NET
Name Server: B.IANA-SERVERS.ORG
Name Server: C.IANA-SERVERS.NET
Name Server: D.IANA-SERVERS.NET
Name Server: NS.ICANN.ORG
Status: clientDeleteProhibited
Status: clientRenewProhibited
Status: clientTransferProhibited
Status: clientUpdateProhibited
Updated Date: 27-jun-2008
Creation Date: 14-sep-1998
Expiration Date: 07-dec-2013
THANKS!
Josh Burke
General Mills
(763) 764-5524
Josh.burke@genmills.com
Caroline Chicoine
Fredrikson & Byron, P.A
(314) 991
991-8486
8486
cchicoine@fredlaw.com
Kristine Dorrain
(952) 516-6465
kdorrain@adrforum.com

How to Protect your Brand y in the new .world Kristine Dorrain

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