Preceding the final decision of the Internet administration Internet Corporation for Assigned Names and Numbers (ICANN) on the allocation rules of the new Internet root zones, a team of trademark experts (the Implementation Recommendation Team, or IRT) has issued a list of recommendations.
The recommendation includes the formation of an IP Clearinghouse that shall be managed by a neutral third party. Holders of rights of diverse nature, whether registrable or not, may register their rights with this IP Clearinghouse for a certain fee. The rights will be verified upon registration and afterwards annually. The data collected herein shall be used to support various other protection mechanisms recommended by the IRT. The recommendations include the “Globally Protected Marks List” (GPML), a watch notice procedure, a swift take-down procedure and detailed information in the domain owner databases of Whois (“Whois” is the colloquial name for the databases of the domain registries that contain the data to be made publicly available).
Globally Protected Marks List
The GPML is likely to become the most significant tool. Trademark owners who wish to have their mark included in this list have to register it with the IP Clearinghouse as a first step. It shall be a requirement for inclusion in this list that the applicant owns at least 200 national registrations in at least 90 countries in all five ICANN regions. The registrations must date back to prior to November 1, 2008. In addition to other requirements, a Second Level Domain that is identical to the mark must be registered in at least 50 countries. It shall not be a requirement that the owner applies (or has applied) for a new Top Level Domain (TLD) that corresponds to the mark. It is intended that registered marks shall enjoy a significantly heightened level of protection compared with the protection awarded to non-registered marks, such as, for instance, an automatic comparison of applied-for new TLDs with this list and refusal of registration of the applied-for TLDs in case of identicalness.
Watch notice procedure
The watch service shall enable every natural or legal person, against a fee, to receive a notification if TLDs are applied for that are identical to top level strings that the person has identified as to be watched. Such watch service shall also be called into existence for second level domains. Both procedures shall not hinder the actual registration but shall give the watching person the possibility to take actions if that becomes necessary.
In addition to these preventive measures, a swift take-down procedure shall be implemented, the Uniform Rapid Suspension System. The system shall apply to obvious trademark infringements and abusive use of marks in domain names in connection with a website that also contains abusive use of a mark. If such obvious misuse or infringement is discovered, the respective domain will be blocked for the time of registration and afterwards will be dissolved, depending on the outcome of the procedure. The domain owner will be informed of the blocking and may provide a statement displaying his right or rightful interest in the use of the domain. During the subsequent proceeding, a similarity check will be undertaken and it will be examined whether the domain owner has a right or rightful interest in the domain and whether the domain is registered or used in bad faith. Depending on the outcome, the domain will be released or will remain blocked and will subsequently be deleted. This procedure shall be independent from the UDRP (Uniform Domain-Name Dispute-Resolution Policy) and potential judicial procedures.
Owners of trademarks and other similar rights should closely follow the developments regarding the new Top Level Domains. The recommended measures contain protection mechanisms for rights holders that should be exhausted. Thereby, costs may be kept low and the value of a mark may be protected.