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In the second part of this “In the Spotlight” series of interviews with the Trademark Clearinghouse, WIPR asks whether the system has affected cybersquatting and what the future holds.
Did cybersquatting increase in 2015? Not necessarily, but brand owners were more active in tackling the problem at the World Intellectual Property Organization (WIPO) than the previous year. According to WIPO figures published in 2016, trademark owners filed 2,754 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP), 4.6% more than in 2014. Disputes concerning new generic top-level domains (gTLDs) accounted for 10.5% of the overall filings, with WIPO stating that the new suffixes had helped to drive the 4.6% increase.
Despite the influence of new gTLDs, legacy domains still featured most often in disputes: addresses incorporating .com, .org, .net and .info combined were targeted in nearly 86% of cases. In fifth spot, .xyz was the highest ranking new gTLD, with a 1.6% share. Additionally, .club, .email, .website and .online (all new suffixes) all appeared in the top ten, and WIPO said it expects the number of new gTLD-related disputes to rise.
Some of these cases will have originated from warnings sent by the Trademark Clearinghouse (TMCH), a rights protection mechanism for the new gTLDs. Along with validating trademarks submitted by brand owners, the TMCH alerts registrants about trademark rights if they attempt to register a domain name matching a trademark. If that registration is made, the TMCH also notifies the relevant rights owner that the domain has been registered.
It is not true that all such registrations will infringe a trademark, but the notification to the rights owner allows it to track and take any necessary action, such as filing a UDRP at WIPO, to protect its mark. Rights owners can also receive ‘ongoing’ notifications beyond the minimum 90-day period that was originally envisaged.
No ‘skyrocket’ yet
Asked whether the ongoing notifications have helped to tackle cybersquatting, Peter Van De Wielle, marketing manager of the TMCH, explains that: “A notification doesn’t necessarily mean cybersquatting. The service helps brands to keep track of domain names being activated matching their trademarks. With the multitude of TLDs launching, it’s challenging to either register in or monitor all the new gTLDs. The notifications alert them that there is something they should take a look at. After that they can assess how to proceed,” he adds.
Given that hundreds of new gTLDs launched last year, the 4.6% increase in cases is probably not that high. However, brand owners can also use the Uniform Rapid Suspension System to resolve domain disputes, as well as other bodies handling UDRP cases. What’s more, there are many factors affecting whether to take action against possible infringers, such as budget, possibility of a settlement and mere awareness of the website, all of which can affect the filing figures.
“THE REVIEW WILL GIVE THE ICANN COMMUNITY A MORE DETAILED INSIGHT INTO THE PROGRAMME AND THE LINKED RIGHTS PROTECTION MECHANISMS.” JAN CORSTENS
Therefore, without digging deeper it may be easy to assume at first glance that new gTLDs are causing big problems for brand owners, but this is not necessarily the case. It is why education about the new domains is important, to avoid any mischaracterisations.
Jan Corstens, worldwide project partner of the TMCH (Deloitte, which is validating trademarks), says the TMCH plays its part in education efforts. “The new gTLD programme is complex, with many different TLDs launching in different phases, timing and pricing. We firmly believe in partnering with the community in creating awareness.
“The TMCH is only one part of the process that a brand owner needs to go through. Depending on its strategy (defensive or active) each trademark owner will have different needs. Our outreach focuses primarily on the channel of agents (mainly corporate registrars and law firms) and the registries.
“We’ve created marketing collateral such as launch videos, brochures and dedicated webpages. Our website has a gTLD launch calendar and we regularly organise webinars and attend/sponsor industry events,” he adds.
Responsibility for education also lies with the Internet Corporation for Assigned Names and Numbers (ICANN), the body responsible for the domain name system. After ICANN decided to greatly expand the number of gTLDs, in 2009 a group of specialists proposed several tools for protecting trademarks. One of the mechanisms suggested by the group, called the implementation recommendation team, was an ‘IP clearing house’. Other proposals including a ‘globally protected marks list’ never came to fruition, but the TMCH did.
Moving on to discuss wider trends, Van de Wielle says brands are still “figuring out how to work out the programme” and that migration to new gTLD addresses has proved to be complex, “but they do see the potential benefit” of them.
“It’s too early to assess whether brand adoption has been successful; it will take a few more years. Some TLDs have potential, and there are some good use cases popping up already,” he adds.
“ONE OF OUR GOALS IS TO PROVIDE CONSISTENCY, WHATEVER HAPPENS IN THE SECOND ROUND.” PETER VAN DE WIELLE
Corstens explains that it “takes time” for brand owners and corporations to go through the whole process, noting that Deloitte’s planned migration to .deloitte “has not been that fast” although, he says, “given the risk-averse company we are, we managed to complete all of the steps in a timely, efficient manner”.
One of the unknowns facing the TMCH is its role, if any, in the second round of applications, the timing and nature of which has yet to be confirmed.
Corstens says: “With the first round of the new gTLD programme currently going through different review processes, it’s too early to make any conclusions. However, any subsequent round will also require rights protection mechanisms and we are looking forward to building further on the foundations built in the first round. This would also limit any new development for TLD operators, registrars and registries.”
Van de Wielle adds: “One of our goals is to provide consistency, whatever happens in the second round.”
Time for an appraisal
ICANN has committed to reviewing the TMCH as part of a wider review process. According to ICANN, it wants to “perform a thorough assessment of the effectiveness of the TMCH services in meeting their intended rights protection objectives” and “identify other issues for evaluation that should be included in the analysis of the Trademark Clearinghouse, such as issues that could be addressed in policy development work in the community”. The final goal is to “help inform the discussion and enable consideration of the rights protection mechanisms available in the domain name space”.
Under the review spotlight will be the effectiveness of the TMCH guidelines and verification process, sunrise periods, and the trademark claims service. ICANN will also assess whether the TMCH should flag “key terms associated with the goods or services identified by the mark, and typographical variations identified by the rights holder”, as well as provide “an analysis of the impact of the operation of the Trademark Clearinghouse’s notifications on the commercial watch services market”.
Commenting on the review, Corstens says: “The area of expanding the reach from exact match to a certain level of variation and the expansion of the duration of coverage are both issues that trademark holders and their agents have addressed with us in the past.
“To a certain degree we managed to answer those requests (with the ongoing notifications and the variations for those ongoing notifications), yet it would be interesting to see if this could be implemented in the full scope of the Trademark Clearinghouse.”
As part of the review process (a final report is expected in Q3 2016), the TMCH has to provide requested data. Corstens says: “The review will give the ICANN community a more detailed insight into the programme and the linked rights protection mechanisms.”
Asked whether he has any concerns with the review, Corstens notes: “The TMCH is a challenging project as it had to become a universal validation mechanism for different types of trademarks from different scripts and jurisdictions for all new gTLDs. It will be crucial to link any insight and questions to that universal level.”
There is no suggestion that the TMCH has performed badly, but rights owners will surely welcome the outcome of the review to assess where improvements can be made. In theory, the picture should be clearer later this year, but given the number of stakeholders involved in the ICANN community, there is no certainty that the Q3 2016 deadline will be met.
Trademark Clearinghouse, UDRP, WIPO, gTLDs, tardemark, Peter Van De Wielle,