Protecting rights in top-level domains

23-02-2017

Azlina Aisyah Khalid

From its humble beginnings as the global system for interconnected computer networks that used a specific protocol—the internet protocol (IP)—the internet has become a symbol of how much the modern world is driven by technology.

The domain name system was introduced in 1983. A domain name was initially a proxy of an IP address, which functions as an identifier to locate or recognise internet resources, such as computers, networks, and services, with a text-based label that is easier to memorise than the numerical addresses used in the IPs. When the system was devised in the 1980s, there were only two groups: (a) country code top-level domains (ccTLDs); and (b) seven generic top-level domains (gTLDs).

The internet grew and expanded exponentially, and the Internet Corporation for Assigned Names and Numbers (ICANN) was established in 1998. Its duties include administering registries of IP identifiers. As a byproduct of domain name registration, many businesses and companies use their trademarks and brands in their domain names.

However, this did not come about without any challenges, and one of ICANN’s initial core tasks was to manage the ‘trademark dilemma’: there had been prolific use and registration of domain names which included trademarks, more often than not by parties who were not the owners of the said trademarks.

From an intellectual property perspective, misappropriation of domain names may be categorised as cybersquatting, typosquatting and parasitic behaviour. Cybersquatting is the act of registering or using a domain name that uses a party’s trademark in an unauthorised manner. Typosquatting differs in that it relies on the typographical errors that may be made by internet users when they input a website address into a browser. This can range from common misspelling of words or genuine typographical mistakes by the users, or even differently phrased domain names. Similarly, parasite owners also expect to gain financially through use of the offending domain name.

"As we move through 2017, it will be interesting to note whether ICANN’s policy development process will be positive for trademark owners."

In 1999, ICANN introduced the Uniform Domain-Name Dispute-Resolution Policy (UDRP), which was the first global alternative dispute resolution policy to protect trademark owners. A registrant bears the responsibility of making the proper representation that its chosen domain name will not impinge on any third party’s rights. In the event that it does, the registrant must further submit to the mandatory requirement that it will agree to participate in an arbitration-like proceeding should any third party assert such a claim.

The goal of the UDRP was to create a streamlined process for resolving such disputes more quickly and cost-effectively. In most instances, disputes are settled in no more than two to three months and at a fraction of the cost it would take for legal proceedings. In the event of an unsatisfactory outcome, a complainant may still bring a civil action against the domain name registrant in the various jurisdictions.

Since being introduced, the UDRP may be regarded as a success as it gives a speedy outcome to brand owners whose mark or brand has been used in a domain name by unscrupulous registrants. However, the dynamics of the UDRP will certainly change with the continuing introduction of new gTLDs by ICANN. From an initial 22 gTLDs, ICANN has now approved or delegated nearly 1,200 new gTLDs including .ferrari, .intel, .lifestyle and .equipment.

As a result of the expansion, new additional rights protection mechanisms have been introduced such as the Uniform Rapid Suspension System, which was designed as a complement to the UDRP. There is also the Trademark Clearinghouse, a global database of verified trademark information to support the rights protection process. All these measures form part of ICANN’s policy development process.

As far as Malaysia is concerned, these changes will be more than welcomed by the Kuala Lumpur Regional Centre for Arbitration (KLRCA), which manages the Kuala Lumpur Office of the Asian Domain Name Dispute Resolution Centre, where such disputes are governed by the UDRP and its rules. In addition, the KLRCA works hand in hand with the Malaysian Network Information Centre, which is the agency responsible for Malaysia’s ccTLD: .my.

As we move through 2017, it will be interesting to note whether ICANN’s policy development process will be positive for trademark owners, but one thing is for sure: the internet world will never be the same again.

Azlina Aisyah Khalid is the senior legal counsel at Henry Goh. She can be contacted at: azlina@henrygoh.com 

Azlina Aisyah Khalid, internet protocol, technology, gTLDs, ICANN, UDRP, KLRCA, trademark, .ferrari, .intel, typosquatting, ccTLDs,

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