21 May 2017

Dot Brands and Domain Disputes: A Sneak Preview of INTA Sessions

The session—CSU50  Dot Brands and You: Should You Apply in Round Two?—is moderated by Roland LaPlante (Afilias, USA) and will include contributions from Anil Garg (Dabur India Limited, India) and Gretchen Olive (CSC Digital Brand Services, United States).

We put some questions to Mr. LaPlante ahead of the discussion.

How are dot brand and legacy Internet presences being integrated?

Generally, dot brands are starting in a new place (e.g., specific promotion program sites) and then traffic is slowly being transitioned to the dot brand. Only a few are moving entirely to a dot brand, for example, .cern. Keep in mind that no one is abandoning their .com just yet—nor should they—but the adoption by some major brands is real evidence that dot brands will be major competitive tools and not just for defense. Usage will expand rapidly.

What benefits were expected and have they been realized?

The main benefits are branding, control, and security, and all three are being realized by those with the vision to begin fully integrating this asset into the marketing and business mix.

What advice should be given to potential new applicants?

First, watch the current dot brands and learn how they are leveraging the asset. Second, begin preparing now for the next round of applications. It takes time to teach your team about this new concept, so get your sponsors and other teammates in place.

When is a second round likely to happen?

A second round will definitely happen and is under active discussion at the Internet Corporation for Assigned Names and Numbers (ICANN). Timing has still to be determined—some proponents are pushing for 2019, while others think that later is more likely.

Since dot brands pose the lowest security and stability risks, there is a strong argument for a dot brand-only round, which could happen earlier than a general round.

What is the most innovative use of a dot brand that you have seen?

BNP Paribas is leveraging its dot brand to launch a range of different campaigns (e.g.,  cib.bnpparibas for its corporate and institutional banking segment).

Audi is enabling individual .audi sites for each dealer in Germany. The Audi implementation gives the firm greater leverage over the dealers, as the .audi team can take a dealer site entirely off the Internet if the dealer fails to meets its obligations to Audi. This gives Audi greater control over its trademarks and brand, while extending its branding into its web address.

Abbott Labs is running lifetothefullest.abbott as a consumer campaign; BMW offers a futuristic vision in a site called next100.bmw. The Australian Football League has play.afl running. Every day, more sites appear as dot brands gain momentum.

UDRP Jurisprudence Update

Another session that dot brand owners (and others) will be keen to attend is CT52  Version 3.0 of WIPO’s UDRP Jurisprudential Overview, at 3:30 pm on Tuesday.

When filing a case before WIPO, and when ruling on a domain name dispute, Uniform Domain-Name Dispute-Resolution Policy (UDRP) parties and panelists routinely consult and cite this authoritative resource, which is being updated for the first time since 2011.

Talking registrants through the changes are Brian Beckham (WIPO, Switzerland); David Bernstein (Debevoise & Plimpton LLP, United States); Erik Wilbers (WIPO, Switzerland); and Tony Willoughby (WIPO UDRP panelist, United Kingdom).

We put some questions to Mr. Beckham ahead of the discussion.

When can we expect WIPO Overview 3.0 to be published, and how different will it be from the current version?

It will be shared publicly at the Annual Meeting, and at around the same time, it will be published on WIPO’s website.

The jurisprudential developments reflected in WIPO Overview 3.0 are mostly of an iterative nature. In a few limited areas where panels had held sometimes divergent views, there is now a well-accepted consensus. Readers will also appreciate a more straightforward reporting style. The companion WIPO UDRP resource, the Legal Index, has also been thoroughly updated to include the most relevant and cited cases in over 200 case categories organized by keyword/topic.

Can you outline some of the key updates in WIPO Overview 3.0?

One concerns procedure. Notable areas include discussion of (i) UDRP case standard settlement practice; (ii) case consolidation scenarios; (iii) requirements for refiled cases; (iv) the impact of court proceedings on UDRP cases; and (v) a more detailed discussion of reverse domain name hijacking scenarios. According to WIPO, this is where the UDRP is used in bad faith to “attempt to deprive a registered domain name holder of a domain name.”

Do you have any tips for trademark owners filing cases with WIPO in 2017?

We caution parties not to take anything for granted, no matter how many cases they have filed or defended. If a case is worth filing, it is worth doing right, and that is precisely what WIPO’s UDRP resources aim to assist with.

More specifically, at first instance this means always providing clear evidence of trademark rights (including any licenses or assignments), such as a registration certificate (as distinct from a list of registrations) or indications of common law trademark rights.

Filing parties should provide specific evidence (e.g., dated screenshots, including those showing any changes in use over time) showing a respondent’s bad faith; this may include a need to provide translations, if relevant.

In cases of consolidation, filing parties should be prepared to provide sufficient indications of common (respondent) control.

How has the new gTLD program affected the updated Overview, if at all?

Cases involving new gTLDs constitute an increasing share of WIPO’s domain name caseload (roughly from 5 percent, to 10 percent, to 15 percent over each of the past three years, respectively), contributing to record WIPO filing in 2016 (3,036 cases). However, their jurisprudential relevance has been somewhat limited.

In specific early cases, WIPO panels considered the relevance of the new gTLD itself under the first element standing test for confusing similarity (e.g., www.nike.shoes v www.nike.web v www.nike.horse). As more panels considered this topic, the consensus view among WIPO UDRP panels is that in principle, new gTLDs are viewed no differently from other TLDs for the purposes of the first element standing test, but they may be particularly relevant under the second and third element (e.g., in showing evidence of targeting a complainant in bad faith, or in potentially showing legitimate co‑existence).

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