FLUID TRADEMARKS:

KEEPING THEM WATERTIGHT

VOLUME 3, ISSUE 2
Nominet
The .uk policeman?
Social media
Feeling copied
Brand Finance
Compiling the rankings
ICANN post-NTIA
The government threat
2
IN THE SPOTLIGHT
2
litigation, but the URS takes this notion one step
further. As a result, brand owners may have very
little room to overcome potential free speech or fair
use arguments raised by a registrant. Also, unlike
the UDRP, the sole remedy available under the URS
is the suspension of a domain name; an address will
not be cancelled or transferred to the complainant.
Trademark owners should keep these and other
aspects in mind when deciding whether to
initiate a URS proceeding, and would be wise
to view the URS as a complement to the UDRP,
not a replacement for it. Te two mechanisms
are not mutually exclusive: a brand owner could
conceivably bring both a URS and a UDRP
against the same domain.
gTLD DISPUTES
Where do the newly created post-
delegation dispute procedures t in?
Many of these proceedings involve claims
against a top-level registry, not a second-level
registrantas with the UDRP or URS. Tey
operate in a similar manner to new generic top-
level domain (gTLD) objections, but apply afer a
string has been delegated by ICANN.
For example, the Trademark Post-Delegation
Dispute Resolution Procedure is, not surprisingly,
trademark-based. It acts as sort of a super
UDRP for situations where a registry is either
using a TLD itself to facilitate infringement, or is
engaging in a systematic or substantial pattern
or practice of allowing infringing second-level
ICANN has created a new Uniform Rapid
Suspension System (URS). How is this
different from the UDRP?
Te URS difers from its well-known predecessor,
the Uniform Domain-Name Dispute-Resolution
Policy (UDRP), in many ways. Aside from
certain procedural diferences, such as reduced
fling fees and an appeal mechanism, the URS
also carries a higher burden of proof.
Unlike with the UDRP, a complainant needs to
establish each requirement of the URSsuch
as bad faith or a lack of rights or legitimate
interestsby clear and convincing evidence.
Te UDRP was created to serve as a simpler and
quicker mechanism for resolving disputes than
Trademarks & Brands Online Volume 3, Issue 2
THE BEST
WAY TO
FIGHT
As the number of web
addresses rises and online
brand protection costs
increase, cultivating a cost-
effective strategy for handling
domain name disputes
becomes essential. Don
Moody and Khurram Nizami
of New gTLD Disputes, a
domain dispute outsourcing
provider, answers TBOs
questions on the current state
of dispute resolution.
www.trademarksandbrandsonline.com
3
Don Moody is an IP and privacy
attorney based in Los Angeles. A
15-year veteran of the technology
industry (with 11 as a practising
lawyer), Moody has extensive
expertise in brand protection, IP
enforcement on the internet and
(most recently) ICANNs new gTLD
programme. He has a law degree
from UCLA and a Master of Science
in computer information systems
from Boston University, in addition
to being a registered patent attorney
at the USPTO.
With a substantial background in
IT, Khurram Nizami brings a
breadth of experience to internet
IP enforcement and ICANNs new
gTLD programme. He completed
his undergraduate studies at U.C.
Berkeley and law degree at Loyola
of Los Angeles.
3
domains to be registered in bad faith. Unlike
the UDRP however, this procedure has many
exceptions, such as diferentiating between
mere knowledge that infringing names exist
within a registry and af rmative conduct that
encourages registrants to procure them.
Te Registry Restriction Dispute Resolution
Procedure (RRDRP) applies to community
TLDs. Among other things, ICANN requires
that such TLDs are managed for the beneft of
the community which they claim to serve, and
grounds for a RRDRP action may exist where a
registry owner has neglected to do so.
Te Public Interest Commitments Dispute
Resolution Procedure applies where a registry
owner has formally adopted certain additional
safeguards to help protect against fraud, IP
infringement or other conduct by entering into
public interest commitments (PICs), which
become incorporated into the registry agreement
with ICANN via specifcation 11.
For example, a registry might have adopted
certain PICs in order to secure approval for
the TLD, notwithstanding concerns raised by
national governments or other interests. ICANN
has created this dispute procedure for when a
party contends that a registry has failed to do
whatever it said it would do in its PICs.
Is enforcement in country-code TLDs
(ccTLDs) still important? Should I consider
reallocating any of those resources or
changing my approach here?
Traf c and overall registrations to many ccTLDs
could be reduced as a result of the new gTLD
programme. While certain extensionssuch as
.ca for Canada or .au for Australia, as well as TLDs
for smaller countries that carry non-geographic
connotations, including Montenegro (.me), Tuvalu
(.tv) and Federal Micronesia (.fm)are likely to
remain popular, trademark owners might consider
gTLD DISPUTES
AN ACQUISITION
THAT DOES NOT
IDENTIFY THE BUYER
CAN FUNCTION
AS A GOODAND
MORE CERTAIN
AND POTENTIALLY
CHEAPER
SUBSTITUTE FOR
LEGAL ACTION.
taking a second look at brand protection eforts in
territories with relatively small populations or that
may have less commercial viability.
From a dispute perspective, a number of ccTLD
registries now employ policies that track the
UDRP word-for-word, or nearly so. Many even
use the same decision providerssuch as the
World Intellectual Property Organizationwith
similar procedural rules and English-language
submissions, and directly integrate UDRP case
law as precedent for their expert determinations.
As a result, consolidation of ccTLD enforcement
work has become easier than ever before.
If I dont want to le a formal dispute (or a
lawsuit), what are my options?
An infringing domain (or social networking
page) can sometimes be recovered without
taking legal action, such as by stealth purchase
where the identity of the buyer is concealed.
While trademark owners may be reluctant to
reward infringing behaviour, this strategy can
be particularly useful where a registrant has
a potential defencefor example, fair use or
lachesor if it will sell the domain at a price
lower than the cost of hiring counsel and fling a
complaint, even if it proved successful.
Many cybersquatters are keenly aware of the
fnancial and strategic issues facing brand owners,
so an acquisition that does not identify the buyer
can function as a goodand more certain and
potentially cheapersubstitute for legal action.
As the saying goes, an ounce of prevention is
worth a pound of cure, and brand owners should
continue to integrate proactive alternatives to
dispute resolution. Along with defensive domain
registrations, use of the Trademark Clearinghouse
(TMCH) can reduce policing costs by giving brand
owners the ability to pre-register names in sunrise
periods. Te TMCH also ofers a claims service
that can provide notice to both the brand owner
and registrant about potential infringements.
Some new gTLD registries also ofer block list
type services such as Donutss Domain Protected
Marks List. Tese can actually prevent registration
of infringing domains and therefore trim both
policing and enforcement budgets. Such services
are likely to grow in attractiveness as the domain
name system continues to expand.

Don Moody is co-founder of New gTLD Disputes.
He can be contacted at: don@newgtlddisputes.com
Khurram Nizami, who helped with this article, is
a staf attorney at New gTLD Disputes. He can be
contacted at: kanizami@newgtlddisputes.com
Trademarks & Brands Online Volume 3, Issue 2
THE BEST
WAY TO
FIGHT
www.trademarksandbrandsonline.com
15260 Ventura Blvd. Suite 1810 Sherman Oaks CA 91403 U.S.A.
Tel: +1(888) 402-7706 Fax: +1(818) 474-7070 e-Mail: info@newgtlddisputes.com
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