NEW gTLDs: BEST PRACTICES FOR PROTECTING YOUR BRANDS

September 4, 2013

REUTERS/Ajay Verma

TODAY’S SPEAKERS

J. Scott Evans

Head of Global Brand,

Domains & Copyright

Yahoo!

Elisa Cooper

Director of

Product Marketing

MarkMonitor

Ronda Majure, Moderator

VP, Business Segment

Sales, Trademarks

Thomson Reuters

Judith L. Harris

Partner

Reed Smith

J. SCOTT EVANS

Head of Global Brand, Domains & Copyright

Yahoo!

TRADEMARK CLEARINGHOUSE BASICS

Purpose – central repository for information to be authenticated, stored, and

disseminated pertaining to rights of trademark holders

Addresses marks eligible for Trademark Claims and Sunrise services – both

mandatory for all new gTLD registries

Will operate separately from ICANN – Deloitte to perform authentication

functions and IBM to perform technical database functions

Costs borne by registries (setup fee of $7,000 to $10,000) and trademark

owners (filing fee generally about $150 per mark per year, plus service

provider submission fees of $500+)

TRADEMARK CLEARINGHOUSE BASICS

Standards for inclusion:

Nationally or multi-nationally registered word marks from all jurisdictions

(substantive review required for Sunrise services)

Any word mark validated through court of law or other judicial proceeding

Word marks protected by statute or treaty currently in effect or in effect on

or before June 26, 2008

Does not include any common law rights other than the above

TRADEMARK CLEARINGHOUSE BASICS

Registrations available for 1- 3- and 5-year terms

Includes ten domain name matches for marks with spaces, hyphens, and

other special characters (e.g., “&” and “@”)

Permitted up to 50 “previously abused names” for Claims Service

Verification began March 23, 2013

TRADEMARK CLEARINGHOUSE BASICS

Sunrise

Trademark Claims Service

BE SMART. BE PREPARED.

Evaluate & rethink your existing domain holdings and brand

protection strategy

Consider new gTLDs and their implication to your brand: threat,

opportunity or neutral

Cooperate, budget and communicate with others in your organization

to meet your goals

PRE-LAUNCH PLANNING

Evaluate portfolio to set divestment, investment & enforcement priorities

Review enforcement mechanisms

Adapt existing enforcement strategies to encompass new gTLD space

Review list of new gTLDs and Plan for participation in Trademark

Clearinghouse and select Sunrises

Remain apprised of updates to the program timeline

POST-LAUNCH

Continue adapting domain name enforcement strategy to include

new gTLDs as launched

Acquire and register desired second-level domains in third-party

new gTLDs

Disable or recover infringing domain names through URS or

UDRP proceedings, or ACPA if necessary

Monitor ICANN developments or partner with ICANN specialist to

assist with education, training and strategic planning.

JUDITH L. HARRIS

Partner

Reed Smith

WELCOME TO A WACKY WORLD OF WEIRD NEW ACRONYMS!

(“WWW.WNA”)

POST-DELEGATION DISPUTE RESOLUTION PROCEDURES (“PDDRPS”)

As the number of gTLDs expands, so too will opportunities

for cyber-mischief

Once new gTLDs become operational, you will have to become even more

vigilant to protect your Company’s IP

ICANN has developed five post delegation dispute resolution procedures

(“PDDRPs”) to help you deal with the different types of problems you may

encounter

POST-DELEGATION DISPUTE RESOLUTION PROCEDURES (“PDDRPS”) – CONT.

PDDRPs are designed to help enforce commitments made by Registry

Operators, Registrars and Registrants regarding operation of Registries and

registration of domain names

Each procedure has its own dispute resolution providers (“Expert Panels”)

and its own set of rules

Registries/Registrars/Registrants commit to be bound by Panel

determinations and to implement remedies ICANN imposes

Five PDDRPs: UDRP, URS, Trademark PDDRP, RRDRP and PICDRP

1. UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (“UDRP”)

Establishes mechanism for resolving registration disputes between

Registrants (second level domain name holders) and third parties

Created by ICANN in 1999

Faster, less expensive than lawsuit

Provides neutral venue to challenge abusive registrations/cyber-squatting

Complainant must establish:

Domain name is identical or confusingly similar to a trademark or service mark in

which complainant has rights

Registrant does not have any rights or legitimate interests in domain name

Registrant registered domain name and is using it in bad faith

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (“UDRP”) – CONT.

Complaints may be submitted to any approved UDRP Panel

Remedies limited to cancellation of Registrant’s domain name or transfer of

registration to complainant

Losing party may bring suit under local law (most jurisdictions)

All ICANN accredited Registrars must adhere to policy/incorporate it into

agreements with Registrants

Newly created as a mandatory complement to UDRP

Faster, less expensive

Designed to resolve clear-cut cases of trademark infringement

When trademark holder files complaint, Registrar freezes domain immediately,

then notifies entity against which complaint has been filed

Entity has 14 days to respond

If no reasonable response, domain name owner loses active online service (but

domain name stays with owner)

Expert Panels – National Arbitration Forum (“NAF”) and Asian Domain Name

Dispute Resolution Center (“ADNDRC”)

2. UNIFORM RAPID SUSPENSION SYSTEM (“URS” OR “URSS”)

Addresses Registry Operator’s complicity in trademark infringement

(first or second level)

Trademark holder must prove by clear and convincing evidence that

Registry Operator’s affirmative conduct caused, or materially contributed to,

harm to complainant’s mark

At least 30 days prior to filing formal complaint, rights holder must notify

Registry of alleged infringing conduct and express willingness to meet to

resolve issue

Expert Panels: WIPO, ADNDRC, NAF

3. TRADEMARK POST-DELEGATION DISPUTE RESOLUTION PROCEDURE (“TRADEMARK PDDRP”)

For use when community-based Registry Operator does not enforce

registration restrictions in Registry Agreement

Must be filed by harmed established institution associated with defined

community

Institution must first submit online complaint

Registry must take steps to investigate/remedy complaint

Formal proceeding may be filed if non-compliance continues

Expert Panels – NAF, ADNDRC

4. REGISTRY RESTRICTION DISPUTE RESOLUTION PROCEDURE (“RRDRP”)

To address violations of Public Interest Commitments (“PICs”) in Registry

Agreement/Applications

Procedure drafted to track the RRDRP

Mandatory engagement in online complaint process

Registry must investigate/remedy, if warranted

Complaint may be escalated if non-compliance continues

Complainant has burden of proving:

o Registry Operator violated one or more of PICs in Registry Agreement/application

o Resulting in measureable harm to Complainant

5. PUBLIC INTEREST COMMITMENTS DISPUTE RESOLUTION PROCESS (“PICDRP”)

CLOSING THOUGHTS

Except for UDRP, dispute resolution procedures are new

Some still in development

No one knows exactly how, or how well, they will operate

Most in IP and brand communities feel procedures inadequate

Brands/mark holders should continue to advocate for stronger protections,

while acquainting themselves now with the limited remedies that will be

available to protect their rights as the new gTLDs become operational

ELISA COOPER

Director of Product Marketing

MarkMonitor

DEVELOPING A REGISTRATION STRATEGY

QUESTIONS TO DRIVE REGISTRATION STRATEGY

Does your company actively do business in countries that conduct

business in languages other than English?

IF YES, Select from the list of scripts below:

IDN Strings: Arabic – Chinese – Cyrillic – Hebrew – Hindi –

Japanese – Korean – Persian – Thai

Non-IDN Strings: French – German – Italian – Portuguese –

Romanian – Spanish

Is your company or its business model associated with particular

geographical areas (cities, regions, etc.)?

QUESTIONS TO DRIVE REGISTRATION STRATEGY

Does your company provide goods or services, or perceive risk if being

associated with cultural and/or religious terms, events, and activities?

Does your company actively engage in or sponsor community, charity, or

philanthropic activities?

Does your company actively sponsor major events/activities such as

sporting events/teams/leagues and/or entertainment events/tours (music

concerts, etc.)?

QUESTIONS TO DRIVE REGISTRATION STRATEGY

Does your company find value in or perceive risk if being associated with

legally defined company types?

Does your company provide goods or services that are associated with the

adult, gambling, or alcohol industries?

Does your company perceive risk about being associated with the adult,

gambling, or alcohol industries?

IF YES, perceived risk is: HIGH – MEDIUM – LOW

QUESTIONS TO DRIVE REGISTRATION STRATEGY

Does your company see a benefit in actively registering domain

names that are in areas that could be perceived as negative or

critical?

Does your company perceive risk in *not* registering domain names

that are in areas that could be perceived as negative or critical?

IF YES, perceived risk is: HIGH – MEDIUM – LOW

Does your company find value in utilizing for-fee blocking services

(when offered) that allow for the blocking from use of domain names

by other parties?

TLDs TO WATCH – SIX “SUPER SIX”

Gripe

Charitable

Vice

Cities

Corporate Identifiers

Generic

.App

.Blog

.Home

.News

.Sucks

.Web

.Corp

.Gmbh

.Inc

.Ltd

.Sarl

.Spa

.Charity

.Foundation

.Gives

.Care

.Help

.Gift/.Gifts

.Fail

.Feedback

.Forum

.Gripe

.Review /.Reviews

.Wtf

.Adult

.Bet

.Casino

.Porn

.Poker

.Sex

.Istanbul

.London

.Madrid

.NYC

.Paris

.Tokyo

NEW gTLDs BEST PRACTICES

NEW gTLDs BEST PRACTICES

Identify TLDs of interest

Begin tracking for Sunrise launches

Submit marks to TMCH where Sunrise registrations likely desired

Single registration to start

Monitor Sunrise eligibility requirements and submit additional as necessary

Implement policing strategies for marks submitted to TMCH

Utilize new RPMs and take action only when necessary

QUESTIONS

J. Scott Evans

Head of Global Brand, Domains & Copyright

Yahoo!

Judith L. Harris

Partner

Reed Smith

Elisa Cooper

Director of Product Marketing

MarkMonitor

THANK YOU

TRADEMARKS.THOMSONREUTERS.COM

IP.THOMSONREUTERS.COM

REUTERS/Ajay Verma