ICANN has recently released for public comment the Fourth Draft Applicant Guidebook for new gTLDs. As we have previously reported, the Guidebook covers the details of ICANN's plan for the expansion of gTLDs (generic top-level domains), introducing alternatives to the existing .COM, .ORG, .BIZ, and others in the form of .YOURBRAND. Comments on the latest draft are being accepted at icann.org through July 21, 2010. It is unknown how many additional versions, if any, of the Guidebook will be issued before a Final Version is released.
The latest Guidebook includes a number of changes and additions from the prior version. Of particular note to trademark holders is the incorporation of specific trademark-protection mechanisms that include: the Uniform Rapid Suspension, the Trademark Clearinghouse, and the Post-Delegation Dispute Resolution Proposal. In addition to the trademark protections, the Guidebook includes background checks that can exclude applicants for "intellectual property violations," such as being found liable in a series of cybersquatting proceedings.
The Uniform Rapid Suspension System (URS) is a post-delegation dispute-resolution mechanism intended to more swiftly and less costly address the most obvious cases of trademark infringement or cybersquatting in domain names. While it is similar to a UDRP, the burden of proof is intentionally higher than in the UDRP, and shall be by clear and convincing evidence. The Examiner must also find that there is no genuine contestable issue. Rather than resulting in the transfer of the domain name as in a UDRP decision, a favorable URS decision would result in the domain name being suspended for the balance of the registration period, without resolving to the original web site. The nameservers would be redirected to an informational web page provided by the URS Provider about the URS. Penalties for abuse of the process by trademark holders are also provided.
The Trademark Clearinghouse (TM Clearinghouse) is intended to make verification of rights easier via a centralized database. The Guidebook makes clear however, that inclusion of a mark in the database is not proof of any right, nor does it create legal rights. Likewise, failure to submit trademarks to the TM Clearinghouse should not be perceived to be lack of vigilance by a trademark holder or a waiver of any rights. The proposed standards for inclusion in the Clearinghouse database are for nationally or multi-nationally registered "text" trademarks from all jurisdictions, including countries where there is no substantive review. Additional text marks to be included are those that have been validated through a court of law or other judicial proceeding, or those protected by a statute or treaty currently in effect and that was in effect on or before June 26, 2008. No common-law rights will be included in the TM Clearinghouse database, except for court-validated common-law marks.
The Post-Delegation Dispute Resolution Procedures (PDDRP) provide an administrative proceeding for a trademark holder to claim that one or more of its marks have been infringed by the registry operator's manner of operation or use of the gTLD. The "registry" is the company/organization/party that has the rights to and operates the master database of the domain names in a particular gTLD. However, before proceeding to the merits of a dispute against a registry operator, a one-person Panel will perform an initial "threshold" review. Similarly to the URS, the burden of proof is by clear and convincing evidence. The PDDRP potentially applies to infringements by the registry operator in both the top-level gTLDs and second-level domain names. While not necessary or required, a hearing lasting no longer than one day may be requested by a party or determined to be necessary by the Expert Panel.
While the above highlights the proposed trademark-protection mechanisms, the full Guidebook can be found at icann.org, where interested parties should voice their comments and request potential changes.
Vol. 53, June 2010