20 Sep
2018

Calling all brand owners: act quickly if you want to help shape the future of online enforcement

  • ICANN is seeking data on rights holder usage of new gTLD RPMS
  • Feedback will help inform possible future changes to these critical enforcement tools
  • Dedicated Trademark Owners survey closes on 28 September 2018

The ICANN community is currently undertaking a review of the Rights Protection Mechanisms (RPMs) relied upon by rights holders as they undertake online enforcement efforts. To facilitate this, the RPM Review Working Group is seeking data about usage of the Trademark Clearinghouse, Sunrise, and Trademark Claims services.  In this guest blog, Brian J Winterfeldt, principal of the Winterfeldt IP Group and president of ICANN’s Intellectual Property Constituency, outlines why it is critical that rights holders contribute to the survey – which closes at the end of next week (28 September).

Guest analysis

The expansion of the Domain Name System (DNS) in 2012 included the addition of hundreds of new generic Top Level Domains (gTLDs) such as ‘.clothing’, ‘.shoes’, ‘.discount’, ‘.bank’. This created a great deal of headaches for brand owners, who would have hundreds of new domain spaces in which potential infringement and abuse could occur. Brand owners had to completely reassess their domain name portfolios and online enforcement strategies, including evaluating how best to proactively protect marks in the expanded DNS, and how to monitor and react to unauthorized registrations.

Rights Protection Mechanisms (RPMs) were put in place to mitigate this additional burden on brand owners and, over the past couple of years, the Internet policy community has been working to evaluate these and the impact of the entire gTLD program on brand owners and other parties. As part of this effort, brand owners and others are being asked to complete surveys concerning the Trademark Clearinghouse (TMCH), Sunrise and Claims services (in particular, The Trademark Owners Survey and The Domain Name Registrant Survey). It is important that the brand owner community complete the relevant surveys so the group evaluating the RPMs has a thorough and accurate set of representative data about this community’s experience with these mechanisms, as an important foundation for preserving and improving these RPMs, especially in advance of any further expansions of the DNS.

Background to the surveys

ICANN, which coordinates global policy and technical implementation regarding the DNS, implemented a number of trademark RPMs designed to facilitate individual brand owners’ ability to protect their trademark rights in the DNS, and, as a result, protect consumers from counterfeiting, infringement, phishing and fraud involving misuse of trademarks. These include the long-standing Uniform Domain Name Dispute Resolution Policy (UDRP), which brand owners have relied on for nearly 20 years to address cybersquatting and trademark infringement involving a domain name. Additional RPMs put in place as part of the expansion of the DNS through the new gTLDs program include the Uniform Rapid Suspension System (URS), a fast, cheaper and more lightweight alternative to the UDRP for certain clear-cut cases of infringement and domain abuse, as well as the TMCH and two additional RPMs it supports: Sunrise and Trademark Claims services.

The TMCH is a centralized repository of validated trademark rights, which can then be used by brand owners to participate in the Sunrise and Trademark Claims services. As of 17 September 2018, the TMCH contained 44,411 individual trademark records from 117 countries. All such records automatically generate Trademark Claims notices to would-be domain name registrants within the first 90 days of a new gTLD launch that gives the registrant notice of the relevant trademark rights and permits the registrant to either proceed with the registration or abandon it if the registrant believes their registration and use of the domain name would infringe the rights of the trademark owner. If the individual proceeds with the registration, the relevant trademark owner receives a Notice of Registered Name, from which they can determine whether any enforcement action is necessary. In addition, when TMCH records include proof of use, the mark owner can also participate in early registration periods for new gTLDs – the Sunrise service – in order to defensively register domain names matching their marks in such TLDs (or of course register them for an active business use). 

When it launched these additional RPMs, ICANN committed to performing a review of all the ICANN RPMs – the new gTLD program RPMs (URS, TMCH, Sunrise, and Trademark Claims) as well as the UDRP. The review is intended to identify possible problems with these mechanisms, or areas of possible improvement. Accordingly, in 2016, ICANN launched the Policy Development Process (PDP) to Review All RPMs in All gTLDs (the RPM Review PDP). This PDP is being conducted in two phases, as described in the approved charter: Phase One will focus on a review of all the RPMs that were developed for the 2012 new gTLD program, and Phase Two will focus on a review of the Uniform Dispute Resolution Policy (UDRP).

The TMCH, Sunrise, and Trademark Claims Surveys

Currently, the PDP remains in Phase One. As part of this process, the PDP developed a set of surveys to collect additional data about usage of the TMCH, and the associated Sunrise and Trademark Claims services. Individual surveys have been developed for registry operators, registrars, trademark owners, and domain name registrants.

To ensure that adequate data is provided by the trademark community, we wanted to ensure that these surveys obtained additional visibility and to encourage all brand owners to complete the trademark owners survey – as well as the domain name registrant survey (given that most, if not all, brand owners today also own at least one domain name, if not a large portfolio of domain names both for defensive and affirmative business purposes).

Accordingly, then, please take a few minutes to respond to these surveys, which are available as follows: The Trademark Owners Survey and The Domain Name Registrant Survey.

Trevor Little

Author | Editor

[email protected]

Trevor Little