Trademark RPMs: what do they mean for you?

The Internet will soon contain hundreds of new top-level domains (TLDs). At the moment, your company may be perfectly satisfied with its main web site under .com, and perhaps a handful of country code TLDs used for certain trademarks, local markets or to protect against cybersquatters. So the question is: If you are not planning to register your own TLD, what does this mean for you?

Monday, June 20, 2011, was an historic day for the Internet. With a vote of 13 in favour, one against and two abstentions, the Internet Corporation for Assigned Names and Numbers (ICANN) board of directors approved a plan to dramatically increase the number of Internet domain name endings—called generic top-level domains (gTLDs)—from the current 23.

ICANN has made serious efforts to adopt measures aimed at avoiding the considerable number of trademark infringements that are anticipated with the new gTLDs, and has also created a better and safer platform for industrial and other Internet users involved in future online business. But will this be enough? There are some points to think about, and new terminology to learn.

Trademark Clearinghouse

This requires registries to recognise trademarks that are registered nationally or multi-nationally, and is described by ICANN as “a central repository for information to be authenticated, stored and disseminated pertaining to the rights of trademark holders”.

The Trademark Clearinghouse will hold a database of verified registered word mark rights. All new gTLD registries are required to use the Clearinghouse to support its pre-launch or initial launch period rights protection mechanisms (RPMs). These RPMs, at a minimum, must consist of a trademark claims service and a sunrise process. The data will have to be renewed periodically by any mark holder wishing to remain in the Clearinghouse.

Trademark owners who file claims with the Clearinghouse will also receive notice whenever a domain name identical to their mark is registered during the launch of a new TLD.

This looks good and the Clearinghouse should definitely be used by all word trademark owners, as long as you also are aware of the fact that it does not remove costs nor prevent “typosquatting”. Furthermore, inclusion in the Clearinghouse is not proof of any right, nor does it create any legal rights as such.

Sunrise

In order to combat infringement, all new TLD operators are obliged to conduct sunrise periods, giving trademark owners an opportunity to register trademarks as domain names before a given TLD goes live. Eligible participants will include registered trademark owners providing proof of use. If you wish to exclude your mark/s from all new TLDs, you will have to participate in each new sunrise period.

Uniform rapid suspension system (URS)

Described by ICANN as designed “to enable prompt action on disputes involving trademarks”, this is a quick dispute resolution system for occasions when a registered and word trademark is in current use, and a domain name is identical or confusingly similar, and the domain holder has no legitimate right or interest to the domain name and the domain name was registered and is being used in bad faith. No transfer is possible if you win the case—only suspension.

It remains to be seen how efficient this system will be. A fast track version of the current ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) may have been a better solution.

Trademark post-delegation dispute resolution procedure (Trademark PDDRP)

This is one of the rights protection mechanisms for trademark holders to proceed against registry operators who have acted in bad faith, with the intent to profit from the systemic registration of infringing domain names (or systemic cybersquatting) or who have otherwise set out to use the gTLD for an improper purpose.

What’s in it for you?

While trademark owners worldwide fear that the expansion of the generic TLD space will expose their portfolios to even higher levels of infringement and cybercrime, the Internet remains a fantastic tool for turning a local business into an international success.

So, once you have conducted all the necessary and available steps to—as far as possible—prevent others from misusing your trademarks, how can you use the new system to expand your own business?

One possibility is to find a new TLD that perfectly describes your goods and services, one that you can use in marketing as an addition to your present “You.com” online address, or even adopt as your new head online address.

It may also be that some specific goods or parts of your business are better suited to one or several of the new gTLDs. Some of the proposed new TLDs are created to point out that sub-domains using that specific TLD are legitimate, come from a specific geographic area or offer certain kind of goods.

As ICANN chief executive officer Rod Beckstrom (who will leave ICANN before July 1, 2012) correctly stated at the opening ceremony of the Singapore meeting: “No-one knows with any certainty where new gTLDs will lead us…”. So the best advice at this point is: be prepared.