the urs, udrp and beyond: domain name...
TRANSCRIPT
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Presenting a live 90-minute webinar with interactive Q&A
The URS, UDRP and Beyond: Domain
Name Enforcement in the New gTLD Era Strategies for Brand Protection, Leveraging Recent Decisions, Weighing the Pros and Cons
Today’s faculty features:
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
TUESDAY, DECEMBER 1, 2015
Sara B. Blotner, Associate General Counsel, Citigroup, Long Island City, N.Y.
Sarah B. Deutsch, Vice President & Deputy General Counsel, Verizon Communications,
Arlington, Va.
Brian J. Winterfeldt, Partner, Mayer Brown, Washington, D.C.
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The URS, UDRP and Beyond: Domain Name Enforcement in the New gTLD Era
December 1, 2015
Brian Winterfeldt
• Co-Head of Mayer Brown’s Global Brand Management and Internet practice with over 16 years of experience in trademark portfolio, domain name and other Internet matters.
• Member of INTA’s Board of Directors and Internet and Trademark Administrators Committees (serves as Advisor) and ICANN’s Intellectual Property Constituency (former representative on the Generic Names Supporting Organization Council).
• Frequent author and speaker on cutting-edge Internet issues.
• Gold ranking in World Trademark Review 1000 (listing of top trademark professionals globally).
• Practice encompasses global leaders in the retail and apparel, media, financial services, consumer products, food and beverage, hospitality, and Internet and technology industries.
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Sarah Deutsch
• Independent Internet policy consultant.
• Former Vice President and Deputy General Counsel at Verizon Communications.
• Managed Verizon’s trademark, copyright and patent licensing practice. Deals with legal issues related to global Internet policy, including liability, intellectual property policy, ICANN and Internet jurisdiction.
• Currently chairs INTA’s Internet Advocacy Subcommittee and previously served on ICANN’s Nominating Committee.
• Involved in several high profile cases at Verizon, including two suits in which Verizon was awarded more than $33 million and $23 million from cybersquatters.
• Also worked on the UDRP and was one of the five negotiators for the telecom industry that negotiated the DMCA.
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Sara Blotner
• Associate General Counsel for Intellectual Property at Citigroup Inc.
• Primary practice areas include worldwide trademark counseling, clearance, prosecution and conflicts, right of publicity, corporate transactions, licensing, internet and social media.
• Has lectured on intellectual property issues for the International Trademark Association, Foley and Lardner, Holland and Knight, Kilpatrick Stockton, Lawyer’s Alliance, National Association of Women Lawyers, NYIPLA, Practicing Law Institute, Pro Bono Partnership and ALM.
• Currently handling two gTLD applications filed by Citigroup for .CITI and .BANAMEX, and is also responsible for enforcement in the gTLD space.
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ICANN OVERVIEW, DOMAIN NAME BASICS, AND NEW GTLD PROGRAM UPDATE
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Internet Corporation for Assigned Names and Numbers (ICANN) Basics
• A global multi-stakeholder organization that collaborates with companies, individuals, and governments to ensure the continued security, stability, and interoperability of the Internet
• Created and empowered in 1998 through actions by the U.S. government and U.S. Department of Commerce to privatize the Internet
– Encourage greater international participation
– Bolster commercial competition
– Consumer Choice
• Memorandum of Understanding – Officially recognized ICANN as the entity that would oversee development and implementation of Internet policy and standards for technical operations
• Currently developing a plan to transition the USG stewardship role to the multistakeholder community (the “IANA transition”)
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What Does ICANN Do?
• Coordinates Internet Functions
– Domain Name System (DNS)
– Internet Protocol (IP) Address Allocation
– Generic Top-Level Domain Name (gTLD) System Management
– Country Code Top-Level Domain Name (ccTLD)
• Security and Stability: Best practice education and new security protocols like DNSSEC
• Interoperability: Secure connections between Internet Users
• Competition and Consumer Choice:
– Accreditation for over 1,000 registrars
– Introduction of the new gTLDs
• Ensures an open and transparent policy development process
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Domain Name Registration Hierarchy
• Registry – organization such as Verisign in charge of database of domains
ending with a particular top-level domain (including gTLDs such as .com or
.net and ccTLDs such as .us or .jp).
• Registrar – organization such as CSC, Network Solutions, or GoDaddy that sells
rights to use particular second-level domains (such as citi.com or
mayerbrown.com).
• Registrant – user who purchases right to use a second-level domain for a
designated period of time (e.g., Mayer Brown LLP for the mayerbrown.com
domain name).
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Anatomy of a Domain Name
Source: icann.org
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Overview of the New gTLD Program
• “Old” gTLDs vs. “New” gTLDs:
– Previously 23 gTLDs in operation (e.g., .com, .net and .org).
– ICANN program allowed applicants to create their own new gTLDs (e.g., .bank, or .law).
– Successful applicants become Internet registries.
– Includes internationalized domain names (IDNs) in non-ASCII character scripts such as Arabic, Cyrillic and Lao.
– 1930 complete applications submitted; approximately 700 expected to be open to third parties.
– First new gTLDs went live Q4 2013; 750+ delegated to date.
Source: icann.org 14
Overview of the New gTLD Program
Source: ICANN
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New gTLD Application Process Recap
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New gTLD Application Process Recap
• .BRANDS account for over 30% of new TLDs.
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New gTLD Growth
Source: ntldstats.com
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New gTLD Program Timeline
Source: icann.org; last updated July 22, 2014
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Examples of .BRAND Applications
.macys
.citi .banamex
.eurovision .nowtv
.hughes, .sling, and others .sony, .playstation, and others
.netflix .target .android, .youtube, and others
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Examples of .GENERIC Applications
• ads • adult • agency • analytics • app • arab • art • associates • audio • baby • barcelona • bargains • baseball • basketball • beauty • blog • book • boutique • broadway / bway • broker • buy • buzz • cafe • camera • care • career(s) • casa • center • ceo
• channel • cheap • christmas • city • click • clothing • club • community • company • contact • cool • corp • country • coupon(s) • cricket • earth • eco • education • email • events • exposed • fail • family • fan(s) • fashion • film • finance • financial • fit(ness)
• football / futbol • forsale • forum • free • fun • fund • game(s) • gift(s) • gives • giving • global • golf • gratis • guru • home(s) • host • hot • how • inc • international • investments • joy • juegos • kid(s) • lat(ino) • life(style) • like • link • live
• living • lol • lotto • ltd(a) • madrid • man • market(s)(ing) • media • miami • mobile • moda • mom • mov(ie) • music • network • new(s) • nyc • one • online • page • paris • pay • pet(s) • photo(s)(graphy) • pics / pictures • porn • press • productions • promo
• pub • radio • rent(als) • report • review(s) • rocks • rugby • search • seek • services • sex(y) • shop(ing) • show • site • smile • soccer • social • song • soy • sport(s) • spot • store • stream • studio • study • style • sucks • support • talk
• team • tech • technology • tennis • theater • theatre • tickets • tienda • tips • today • top • toys • translations • tube • tunes • vacations • viajes • video • vip • vision • vote / voting / voto • voyage • vuelos • web • webcam • win(ners) • world • wow • you
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Examples of IDN .GENERIC Applications
• ДЕТИ ("children")
• ком ("com")
• онлайн ("online")
• сайт ("site")
• कॉम ("com")
• คอม ("com")
• 닷컴 ("dot com")
• コム ("com")
• ファッション ("fashion")
• みんな ("everyone")
• 世界 ("world, globe, universe")
• 中文网 ("website")
• 企业 ("enterprise, firm, company")
• 八卦 ("gossip")
• 公司 ("business organization")
• 商标 ("trademark")
• 在线 ("online")
• 娱乐 ("entertainment")
• 新闻 ("news")
• 时尚 ("vogue" / "fashion")
• 点看 ("dot com")
• 网址 ("net address/website")
• 网站 ("website")
• 集团 ("conglomerate, group")
• ("com“) קֹום
• (".web" or "network“) شبكة
• ("com“) كوم
• ("site“) موقع
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RIGHTS PROTECTION MECHANISMS OVERVIEW
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Rights Protection Mechanisms (RPMs)
• Traditional
– Defensive Registration
– Demand Letter (Registrant and ISP)
– Uniform Domain Name Dispute Resolution Policy (UDRP)
– Anti-Cybersquatting Consumer Protection Act (ACPA)
• New
– Trademark Clearinghouse (Sunrise and Claims Service)
– Uniform Rapid Suspension System (URS)
– Domain Name Blocking Services
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Defensive Registration
• Historically, most proactive and cost-effective brand protection strategy
• Previously only needed to consider 23 TLDs
• New gTLD Program significantly changes cost effectiveness of defensive registration strategy
• Over 700 open new gTLDs—generally not cost effective to defensively register all brands across all open new gTLDs
• Brand owners should still defensively register key brands in targeted brand-related new gTLDs
• More focus on business and legal analysis of costs and risks to brands in various new gTLDs
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Demand Letter
• Generally, enforcement efforts in both legacy and new gTLDs begin with demand letters
• Some registrants willing to capitulate and transfer domains to brand owner
• Even if not, demand letters help establish bad faith through unresponsiveness or recalcitrance, which can support UDRP, URS, or other claims
• Letters to ISPs, including domain name registrars and hosting companies, can help address serious infringement, fraud, and other abuse like phishing, spam, or malware, requiring immediate response
• Demand letters remain a key component of brand protection strategy in connection with new gTLD domain name registrations
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Uniform Domain Name Dispute Resolution Policy (UDRP)
• Administrative proceeding before the World Intellectual Property Organization (WIPO), National Arbitration Forum (NAF), Asian Domain Name Dispute Resolution Centre (ADNDRC), Czech Arbitration Court Arbitration Center for Internet Disputes, or Arab Center for Domain Name Dispute Resolution (ACDR)
• Generally much faster and less expensive than litigation (but slower and with a higher filing fee than the URS)
• Remedies are recovery or cancellation of the infringing domain name—no damages available
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UDRP Complaints
• Domain name(s) at issue must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights
• Respondent must have no right or legitimate interest in the domain name(s)
• Domain name(s) must be registered and used in bad faith
• All of the above are required—other problematic domain names are not eligible
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Anti-Cybersquatting Consumer Protection Act (ACPA)
• Defendant has registered, trafficked in, or used a domain name that is identical or confusingly similar to a mark owned by plaintiff
• Defendant committed the act with a bad faith intent to profit from plaintiff’s mark
• Courts consider 9 non-exclusive factors to establish bad faith intent
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Anti-Cybersquatting Consumer Protection Act (ACPA)
• Can sue registrant in personam, or, if cannot establish personal jurisdiction over registrant, in rem jurisdiction against the domain name itself –but only if the registrar or other domain registration authority is located in the US
• Courts divided on whether a domain name registrar can be sued for contributory infringement--recent case law suggests high burden
• Traditional trademark damages / statutory damages between $1000-$100,000 per infringing domain name.
• Historically, most gTLDs and registrars located in US, making in rem jurisdiction an easy option
• Addition of numerous non-US-based gTLDs and registrars through the new gTLD program has complicated this issue
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Trademark Clearinghouse (TMCH)
• Purpose – central repository for information to be authenticated, stored, and disseminated pertaining to IP rights of TM holders.
• Benefits (both mandatory for all new gTLD registries):
1) Sunrise Eligibility (requires “Proof of Use” of TM)
a) Allows early registration in eligible new gTLDs.
2) Trademark Claims Service
a) Warns potential registrants prior to registration that use of the domain may result in TM infringement.
b) Notifies brand owners when a domain matching the mark is registered.
• Operates separately from ICANN.
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Trademark Clearinghouse (TMCH) Basics
• Registrations available for 1- ,3-, and 5-year terms.
• Filing Fee generally about $150 per mark per year, plus service provider
submission fees.
• Permitted up to 50 “previously abused names” for Claims Service.
• Proof of Use (a specimen and signed statement) required for eligibility to
Sunrise and other rights protection mechanisms (RPMs).
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Sunrise Service
• Allows early registration of TMCH-verified marks as second-level domain
names in eligible new gTLDs.
• Dates and requirements published 30 days pre-sunrise period.
• Each sunrise period is offered for a minimum of 30 days.
• Fee for registering domain names usually varies between sunrise and general
registration periods, and is set by registries (wholesale) and registrars (retail),
– ICANN does not regulate prices.
• Trademark owners should be judicious in choosing which sunrises to
participate – strategy should focus on gTLDs most important to their brand
and business.
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Trademark Claims Service
• Provides a warning notice of possible trademark infringement by potential second-level domain name registrants; notice to brand owners when matching name is registered.
• Applies only to “identical matches” – no plurals, variants, contained-in, etc.
• Available only during initial launch of a new gTLD (at least 90 days) – thus, limited enforcement value; some new gTLD applicants voluntarily extending the claims service.
• The TMCH provider offers Extended Claims Service:
– Notice to brand owners extended for an indefinite time. Must maintain TMCH subscription and opt-in for the service.
34
Uniform Rapid Suspension (URS) Basics
• Purpose – to provide a low-cost and rapid means for taking down infringing domain name registrations in the case of clear trademark abuse.
• Complaint must meet the following criteria:
– Domain name at issue identical/confusingly similar to Complainant’s valid registered (or otherwise validated/protected) mark.
– Registrant has no legitimate right/interest to domain name.
– Domain registered and being used in bad faith.
• Must meet “clear and convincing” standard of proof.
• Only remedy is disabling (not recovery) of the infringing domain name.
• $375 filing fee (plus attorney fees).
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URS Complaints
• Entered online; you can use your current login information.
• Documents are linked to each domain name.
• Always entered in English.
• Deficiency check is mostly performed through validation steps; empty fields mean the case will be rejected.
• Must submit proof of trademark rights and proof of use, which can be a relevant SMD file from the Trademark Clearinghouse.
• Must include domain name at issue, its Whois and screenshot.
• Standard URS elements are available by check box, plus may make additional arguments of no more than 500 words in a free form text box.
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URS and UDRP Compared
URS Highlights
• Lower cost
• Quicker decisions
• Automated/self-service
• Entirely web-based
• Portal is *required*
• Case coordinators still available
Differences From UDRP
• No transfer remedy (only
suspension)
• Single examiner
• Higher burden of proof
• Extended response period for
default cases
• Ability to appeal determinations
for up to 1 year
37
Domain Name Blocking Services
• Purpose – preemptive block of domains (with some exceptions) that match or contain eligible TM across multiple TLDs.
• Most Popular – Donuts’ Domains Protected Marks List (DPML).
– Cannot be used for an active website, redirection, email, etc.
– Per TLD “override” (to allow registration) available for a nominal fee.
• Requires TMCH-verified TM (with “Proof of Use”).
• Approximately $3,000 for 5-year block (plus TMCH and attorney fees).
– Donuts expected to operate ~200 registries, equivalent to approximately $3 per domain name block per year.
• Similar blocking services offered by Rightside Registry and Minds+Machines Registry, both portfolio new gTLD applicants.
• Consider blocking services for your most important brands.
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Trademark Post-Delegation Dispute Resolution Procedure (PDDRP)
• Purpose – to provide a means for IP Owners to hold registries accountable for inducing or supporting trademark infringement.
• Trademark owners will be required to demonstrate, by clear and convincing evidence:
a) Affirmative conduct by a registry at the top level that infringes a trademark; and/or
b) At the second level, affirmative conduct by a registry that amounts to a substantial pattern or practice of specific bad-faith intent by the registry to profit from the sale of domain names that infringe trademark rights.
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Trademark Post-Delegation Dispute Resolution Procedure (PDDRP)
• A registry operator is not liable under the PDDRP solely because infringing names are in its registry, or the registry operator knows infringing names are in its registry, or it did not monitor names registered in its registry.
• Remedies are generally limited to remedial measures and costs, or in extreme circumstances, termination of the registry.
• May be difficult to establish proof by clear and convincing evidence absent litigation and discovery.
• Mechanism remains untested, despite launch of first new gTLD over two years ago.
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BRAND PROTECTION STRATEGIES FOR NEW GTLDS
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Approaches to TMCH and Registration Strategies
• Some brand owners with broad Internet presence and targeted for fraud are
defensively registering in all available new gTLDs
• Brand owners with moderate presence or risk are employing both
registration block lists and defensively registering in select new gTLDs
– Downsizing existing domain portfolio frees up budget
• Brand owners with low presence or risk are employing very targeted
defensive registrations or block lists
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Approaches to TMCH and Registration Strategies
• TMCH is a valuable tool, but to enter every mark in your portfolio may be
cost prohibitive
• Optimal strategy for most brand owners:
– Select “Crown Jewels” marks you’ll want to defensively register during
Sunrise and/or general registration
– Employ block lists for your most important brands.
• Determine which marks are your Crown Jewels and confirm submission to
the TMCH now
• Identify new gTLDs most relevant to your brands and business for possible
defensive registration, blocking, or proactive monitoring
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Brand Owner Strategy for New gTLDs
• Portfolio Reevaluation:
– Will have to reevaluate your existing domain name and brand protection
strategy.
• Defensive Registrations (policy explanation):
– Defensive registrations are like insurance: brand owners pay a little now
(cost of defensive registration) to avoid having to pay a lot later (cost of
enforcement action).
• The arrival of many new gTLDs changes the insurance equation: consider
whether the cost to insure (defensive registrations) exceeds the risks (needs
to monitor and enforce)
44
Brand Owner Strategy for New gTLDs
• First step: understand your brand priorities and think about your defensive
registration costs.
– Budget: What are you spending now? How many domains are in your
portfolio?
– Cleaning house: Evaluate your current domain portfolio, its purpose,
and what you can live without.
– Develop Strategy: How aggressive should you be with defensive
registrations in the new gTLDs?
• Again a tiered approach can help: Top Tier; Middle Tier; Lower Tier.
Greater number of defensive registrations in the Top Tier; fewer in
the Lower Tier.
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Brand Owner Strategy for New gTLDs
• Second step: understand RPMs and think about your enforcement
costs/remedies. In the new gTLDs enforcement mechanisms may be more
cost-effective than numerous defensive registrations.
– URS: cheap and quick. Relief is limited, but does that matter?
– Uniform Domain Name Dispute Resolution Policy (UDRP): cost-effective
alternative to litigation that allows for recovery of the infringing domain
name.
– Litigation (i.e., ACPA actions): an option for more complex cases of
cybersquatting, or to address numerous non-US domain owners with
US registration nexus (use judiciously due to cost and time investment).
46
Brand Owner Strategy for New gTLDs
• There are a handful of new gTLDs whose pricing and marketing practices aim to take advantage of brand owners, forcing them to pay extremely high prices for Sunrise and other defensive registrations
• These practices can undermine the RPMs ICANN has implemented to protect brands
• Although brand owners have sought to push back against these practices, ICANN has generally allowed these practices to continue
• Brand owners have appealed to national consumer protection agencies to help address these issues, but have taken minimal action to date
• Fortunately, these bad actors in the new gTLD space are relatively few and far between
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Brand Owner Strategy for New gTLDs: Conclusion
• Cooperate with, educate and communicate with other stakeholders in your
organization to meet your goals – especially as to budget and cost expectations
• Monitor ICANN developments; partner with an ICANN specialist to assist with
education training and strategic planning
• Develop or adapt online enforcement program to account for new gTLDs
• Coordinate with industry peers
• Evaluate successes and failures openly
• Continuously reassess your strategy and adapt to the changing environment
• It is only the beginning and there is much we don’t yet know
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Thank You!
Brian J. Winterfeldt
Co-Head of Global Brand Management and Internet Practice
Mayer Brown LLP
+1 202 263 3284
@bjw72
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Sarah B. Deutsch
Verizon Communications
Sara B. Blotner
Citigroup