Enforcement Procedures To Protect Trademark Rights, Community and Other Interests In New gTLD Environment

Don C. Moody, J.D., M.S. New gTLD Disputes

New gTLD Disputes 2013

Ground Rules
Presentation timeframe: ~30-40 minutes + ~10-15 mins Q&A (if needed). Will strive for few minutes extra break time for java or to cut a.m. email load down to small avalanche Disclaimer: Examples that concern (or in any way implicate) actual applied-for strings are purely for information purposes, especially if objections or GAC advice currently pending! No attempt to single out or debate the merits of any current pending TLD application. Not appropriate forum. This presentation is geared toward post-delegation protective measures (whereas objections, GAC advice, etc. are pre-delegation).

More Ground Rules

Alsovery important rule!
Under no circumstances will the phrase dispute resolution policy ever be referred to as a DERP According to the widely-respected legal authority I CAN HAZ CHEEZEBURGER derp is: [A]n expression associated with stupidity, much like the earlier forms of interjections like duh and dur. While some may tacitly agree with the applicability of this definition in light of how certain objections have been handled thus far, but for the most part we will stick solely to D-R-P as in U-D-R-P.

OK alreadywhat will we be talking about?

What post-delegation protection mechanisms applicants may need to know about What post-delegation mechanisms non-applicants with interests to protect (i.e. trademark/IP owners, communities, etc.) may need to know about Discussion will include not only postdelegation counterparts to predelegation objection procedures (e.g. LRO or community objections) but also touch on new uses of old tools (e.g. the UDRP, court litigation) in new gTLD context.

Mechanisms for Challenging Registry Activities (post-delegation)

Post-Delegation Dispute Resolution Procedure-TM (PDDDP)
Purpose: Address infringing behavior by TLD registry (not second-level registrants does not replace UDRP) Dispute Providers: WIPO, NAF and ADNDRC. Burden of Proof: Explicit standard for burden of proof: objector must prove case by clear and convincing evidence (CC&E) Standing: Holders of nationally (e.g. USPTO) or regionally (e.g. Benelux) registered or unregistered marks validated through court proceedings (similar to TMCH). Pleadings: Substantive portion 5,000 words or 20 pages max (like pre-delegation objections).

Post-Delegation Dispute Resolution Procedure-TM

Other Aspects:
Panelists: Like LRO, single panelist by default, but (New!) now any one party can request three (3) member panel (as opposed to both sides needing to agree). Default: (New!) Setting aside default now possible with good cause showing. Threshold Review: (New!) In addition to administrative review by dispute provider to ensure formatting compliance (e..g complaint <5,000 words etc., as in UDRP and LRO objections) PDDRP also has threshold review to do a quick eval of the substantive merits of the case (e.g. is there a valid TM, has complainant sufficiently alleged measurable harm, etc.). Best analogies would be to quick look procedure under predelegation LPI objections and/or demurrer/FRCP 12(b)(6) in IP litigation. Discovery: (New!) Still at Panels discretion (and limited to a showing of substantial need) but more formalized than LRO or other pre-delegation objections (e.g. parties submit final evidentiary submissions at close of discovery etc.) Hearings: Not required, though can be requested (video/teleconference preferred)

Why Are 3-Member Panels Useful?

(whether domain name disputes or any commercial arbitration)?

Hypothetical Panel #1:

Hypothetical Panel #2:

Or

Justice OConnor

Justice OConnor

Justice Marshall

Hypothetical Panel #3: Or

Fred, Lawyer extraordinaire

Fred, Lawyer extraordinaire

**I can make fun of lawyers because I am one. Comes free with Bar card.

Post-Delegation Dispute Resolution Procedure-TM

Whats Actionable Under PDDRP-TM?
Either: 1. Infringing Conduct by registry itself at top-level that takes unfair advantage or impairs the marks distinctive character or reputation or creates a likelihood of confusion with the mark. Similar to LRO standard. or 2. Infringing Conduct by registry itself at second-level where there is (i) a substantial pattern or practice of specific bad faith intent to profit from the sale of trademark infringing domain names; or (ii) a bad faith intent to profit from systematic registration of infringing names that take unfair advantage or impairs the marks distinctive character or reputation or create likelihood of confusion, etc. Note: The PPDRP-TM specifically advises that a registrys mere knowledge (actual or constructive) that infringing names exist within the TLD is not enough. There must be some form of affirmative conduct showing bad faith intent. See PPDRP at pg. 3.

Post-Delegation Dispute Resolution Procedure-TM

Anything we can take from LROs (e.g. Complainant-v.-Registry precedent)?
Yesa lot of objectors lost!! (e.g. prior restraint aspect) A few oft-cited decisions: Defender Direct v. Right At Home (see also .MUSIC LRO cases): Obtaining a trademark in a first-to-register IP jurisdiction where circumstances show no (or de minimis) actual use in commerce solely to gain standing for an objection and game the system is not permitted.

Express, Inc. v. Sea Sunset, LLC (Donuts): If a partys trademark consists solely/primarily of generic/dictionary terms, this typically cannot be used to support a pre-delegation objection remedy (i.e. denial of the application) as it amounts to a de facto prior restraint on speech. Markholder that chose such a mark voluntarily assumed risk that other may make fair use of such a common term in language. Post-delegation conduct by a registry (i.e. resulting in measurable harm) likely to be looked on more favorably by panels as now not relying solely on conjecture.

Mechanisms for Challenging CommunityBased Applications (post-delegation)

Registry Restriction Dispute Resolution Procedure (RRDDP)
Purpose: To balance application priority (if awarded) with duty toward community at issue. (Spider Mans Uncle Ben: With great power comes great responsibility.) Due to bump in priority, community-based TLD owner must adhere to community principles. Standing: Established institutions associated with a defined (as opposed to clearly delineated) community. See RRDRP at 5.2. Must have already filed complaint with online Problem Report System (RRPRS).

Registry Restriction Dispute Resolution Procedure (RRDRP)

Logistics:
Provider: NAF Filing fees/costs: Still TBD (though check with NAF). Burden of Proof: Burden on objector; must prove by preponderance of evidence (unlike PDDRP-TM). Pleadings: Substantive portion 5,000 words or 20 pages max.

Discovery: Not as formalized as PDDRP but allowed in exceptional cases (similar language to New gTLD Objection Procedure).
Panelists: Like PDDRP, single panelist by default though any one party can request three (3). Default: Also like PDDRP, setting aside default possible with good cause

Registry Restriction Dispute Resolution Procedure (RRDRP)

Other Aspects:
Additional Submissions: Explicit right of reply for Objector (like PDDRP-TM) Respondent Surreply not mentioned (like PDDRP-TM) Hearings: Not required, though can be requested (video/teleconference preferred) Appeals: Similar appeal procedure to PDDRP-TM. Respondent Surreply not mentioned Panel will usually grant leave, as with most LRO objections) Harm/Detriment: There is a measurable harm vs. a likelihood of material detriment Is vs. likelihood Just measurable but no need to be material?

Registry Restriction Dispute Resolution Procedure (RRDRP)

Remedies:
Unlike objections (which would result in either denial of TLD application bid) or UDRP/URS (which transfer or suspend/delete second-level names) Panel has discretion to implement series of Escalating customized remedies. Allowed: Temp suspending ability of TLD to provision new names. Termination of TLD contract (nuclear option). Other stuff? Lawsuits: like PDDRP-TM and unlike New gTLD, RRDRP is not exclusive remedy (more on this in Other Approaches later). Not allowed: Money damages or sanctions. Additional monitoring requirements (e.g. more frequent WHOIS).

Registry Restriction Dispute Resolution Procedure

Anything we can take from Community Objections (which are Complainant-v.-Registry precedent)?

Too early to tell very much yet, but a number of decisions are scheduled to come in over coming weeks.
As in String Confusion, ICC panels may issue contradictory rulings on certain issues (even on same string! See .CAM cases).
Also note: A number of prominent applicants recently (9/24 ) sent letter to ICANN calling for suspension of decisions to allow for additional training of panels (in particular ICC panels) on AGB and how ICANN multi-stakeholder model works etc. See http://bit.ly/1b8qmYT.

Mechanisms for Challenging Community-Based Applications (post-delegation)

Public Interest Commitment Dispute Resolution Policy (PICDRP)
Purpose: (confusing) Not involving charity or pro bono work, but simply voluntarily agreeing to additional protective measures to assuage public concerns on certain strings. Dispute Providers: Still TBD. (PICDRP introduced in Feb 13 and is still in drafting stage). Burden of Proof: Burden on objector; preponderance of evidence standard (same as RRDRP and in contrast to PDDRP-TM --- are we detecting a pattern here?). Standing: Someone materially harmed by activities of registry that has agreed to a PIC as part of TLD application process.

Public Interest Commitment Dispute Resolution Procedure (PICDRP)

Anything we can take from Objections or other Complainant-v.-Registry precedent?

Not really, though ICANN Contractual Compliance efforts may provide some guidance on how issues can be approached.
PICDRP Public Comments showed tension between idea of outsourcing to DRP provider vs. ICANN doing enforcement internally (or a mix of the two) approaches). Differentiate between mandatory PICs (similar to GAC Beijing Communiqu Category 1 safeguards 24/7 abuse contact, complying with laws, beefed up WHOIS, etc.) vs. voluntary PICs that registry chose to adopt on case-by-case basis. Each PIC will have a Specification 11 which is a good place to start any review.

UDRP
Notwithstanding the alphabet soup of PDDRP, RRDRP and other new DRPs, the brand managers old friend the UDRP is still fully available as an enforcement tool for combating cybersquatting that occurs on the second-level. However, given the likely huge increase in volume stemming from 1000+ new gTLDs launching over the coming months, some thought should be given to updating a companys current enforcement strategies, at least as they relate to the UDRP. Most notably, what are some ways that a brand holder can save costs while still meeting a significantly-increased UDRP workload? Leverage the new (and cheaper) URS procedure, if one has a slam dunk case ( i.e. clear and convincing evidence); Outsource UDRP (and/or URS) case handling to provider that uses BPO-style techniques to maximize efficiencies and pass savings on (e.g. volume discounts, monthly retainers and other alternative billing models); UDRP/URS workload should be minimized by preventative maintenance (e.g. TMCH Sunrise, blocking mechanisms like Donuts DPML, etc.) to the fullest extent practicable.

Other Approaches
Other means are available, depending upon what rights/interests one wants to protect (IP, community, etc.) some legal, some strategic:

File a complaint/objection under provisions of a voluntarily-imposed formal RPDRP (if adopted by a restricted-access registry);
Leverage added rights-protection mechanisms at registries (e.g. Donuts DPML);

Submit a grievance (even if no formalized dispute policy exists) to registry compliance staff (whether internal or outsourced to dispute provider or law firm), the registrys governance council or registrant advocate/ ombudsman
File a lawsuit (PDDRP-TM, RRDRP & PICDRPs are non-exclusive remedies);

Other Approaches: Registry-specific Registration Policy Dispute Resolution Policy/Procedure (RPDRP)

Wait, theres another DRP? Youve got to be kidding right?! While there is no specific RPDRP in the Guidebook, if registry voluntarily adopts a restricted/limited access approach to operating its TLD as a value-add to potential registrants (instead of an entirely open or closed strings) it might also implement a formalized dispute resolution procedure as a method of resolving issues that arise in granting or denying access to that TLD. How will I know? Check the contents of the registrys New gTLD application. Also any registry that adopts such a model will likely publish information well in advance of roll-out.

Other Approaches: Registry-specific Registration Policy Dispute Resolution Policy/Procedure (RPDRP)

Illustration:
Proposed (hypothetical) restricted-access TLD: .ELVISIMPERSONATOR Graceland has been trying for several years to mandate that Elvis impersonators be officially licensed (i.e. to protect consumers from severe material detriment from unauthorized rogue impersonators that may even look more like Liberace! See, e.g.: Elvis Impersonators Under Threat http://www.nme.com/news/elvispresley/22830 If Joey Vegas had his .ELVISIMPERSONATOR application denied (e.g. for using a candelabra and bouffant hair), and if the registry operator had a RPPDRP in place, he could have an opportunity to submit documentation (showing that he is indeed a worthy tribute to the King). The registry via the appropriate avenue which could include: compliance officer(s); governance council; registrant advocate/ombudsman; A DRP or other external entity (e.g. a law firm) that the registry outsourced handling of such issues to

Other approaches: Registry-specific Rights Protection Mechanisms

A number of new registries have stated that they will be adopting added rights-protection mechanisms (RPMs). One (real-world) example would be Donuts proposed Domain Protected Marks List (DPML) model. See, e.g. Donuts application for .CAMERA at Ques. 18(a): tps://gtldresult.icann.org/applicationresult/applicationstatusapplicationdetails/859 How it Works: DPML allows brand owners to block their trademarks from registration at the second level across all of Donuts (estimated) 300+ TLDs at a fraction what it would cost to defensively register such terms. Once blocked, domain remains 404/unresolved (no parking pages). Brand owners submit to registrar an exact match of their mark(s) as validated by the Trademark Clearinghouse (TMCH) -- or (important!) a term that contains the exact match of the mark(s).

Other approaches: Registry-specific Rights Protection Mechanisms

How This Differs From TMCH Sunrise: TMCH is simply a database of marks that have been verified, with a Sunrise feature that allows brand owners the ability to reserve names that match their mark (if they so choose) during a prescribed Sunrise period. Donuts DMPL on the other hand, is a means of affirmatively blocking any second-level registrations, and is not tied to any specific Sunrise period. The block lasts up to five (5) years, and potentially offers greater coverage than TMCH Sunrise, in that the domain need only contain an identical match of the mark in question (Compare: TMCH Sunrise only encompasses name that are an identical match without any additional characters).

Other approaches: Registry-specific Rights Protection Mechanisms

What about IDNs? The TMCH currently accepts IDNs, so long as they are the entire string (and not mixed with Latin characters). To date, the TMCH has Hangul, Hebrew, Arabic, Katakana, Cyrillic and Han marks in the database. According to Donuts, the DPML will be able to support registrations in English, French, German, Spanish, and Chinese (and will be looking to adopt other TMCH languages very soon).

Any minimum-character or other limitations? 1-2 character names = not supported. 3 characters = supported but only if entire TM. Domains already registered cannot be retoractively blocked via DPML.

Other Approaches: Registry-specific RPMs

Illustration: Trademark DPML String Validity

Yahoo

yahoo

Valid

Amex

myamexcard

Valid

Verizon

ver1zon

Invalid

The DPML string must be an exact match or fully contain an exact match of the validated mark.

Other Approaches: Registry-specific Rights Protection Mechanisms

Other unique examples?

Other Approaches: File a Lawsuit

While pre-delegation disputes were handled solely by arbitration, and challenging any decisions (e.g. LRO, community, string confusion, etc.) rendered may be difficult, absent evidence of bias or inappropriate conduct by panelist(s) see, e.g. Section 10 of the Federal Arbitration Act addressing concerns postdelegation is not so limited. PDDRP-TM, RRDRP and PICDRP (March draft) each contain (in addition to the aforementioned appeal process at DRP) specific language stating that these procedures are intended to be a non-exclusive remedy, and that aggrieved parties may seek redress in court. See, e.g. RRDRP and PICDRP (March draft) at 21.1; see also PDDRP-TM at 22.

Other Approaches: File a Lawsuit

Framing the Cause of Action: Trademark-based issues would likely be either for trademark infringement/unfair competition/passing off etc., though community issues likely need to be framed in a breach of contract or declaratory judgment (but see this language from RRDRP drafting history: While there may be a concern that this will create a new class of potential claimants under a theory that they are third party beneficiaries to the registry agreement between ICANN and the registry operator, that is not the intent.
http://www.icann.org/en/news/public-comment/rrdrp-15feb10-en.htm (emphasis added).

Where to file: Central District of California (L.A.) or other Locale, based on situation-specific venue/PJ concerns.

Other Approaches: File a Lawsuit

Illustration: Del Monte Intl v. Del Monte Corp., Case No CV13-5912 (C.D. Calif.)

Skinny: Del Monte Europe lost LRO to Del Monte U.S.A. over .DELMONTE TLD, and now seeks Declaratory judgment in L.A. Central District. Complaint filed 8/13/13, Ds time to answer extended.

See you all at ICANN Buenos Aires!

Further Information:

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