New gTLD’s – Trademark Protection Mechanisms

One of the main questions put forward by the majority of brand owners is “How can I protect my trademarks within the new gTLD space?” ICANN have just released DAG (Draft Applicant Guidebook) number four. It is encouraging to see that the rights of trademark owners are being given extensive consideration within the new gTLD space in the form of the IP Clearinghouse, a Globally Protected Marks List, associated rights protection mechanisms (“RPM’s”), and standardized pre-launch rights protection mechanisms.

This version of the draft proposal incorporates changes based upon comments that have been raised in the most recent public comment period that closed on 1 April 2010.

It will be important for Trademark owners to look out for a number of solutions to trademark protection issues within the new gTLD space:

*Uniform Rapid Suspension System (URS) – URS Procedure describes an expedited process to provide trademark holders with a rapid take-down in clear cut instances of trademark abuse. The URS procedure is expected to provide trademark holders with a new, cost effective remedy in addition to those available under the UDRP and applicable law.

* The Trademark Clearinghouse – The Trademark Clearinghouse Model describes a proposal for a central repository of authenticated trademark information for use by registries to support their sunrise or trademark claims processes. This Model is designed to introduce efficiencies into the pre-launch processes for trademark holders and new gTLD registries.

* Post Delegation Dispute Resolution Procedure (PPDRP) – This post delegation procedure should only afford trademark holders the right to proceed against registry operators who have acted in bad faith, with the intent to profit from the systemic registration of infringing domain names (or systemic cybersquatting) or who have otherwise set out to use the gTLD for an improper purpose.

CSC regularly updates our customers with regards to changes and updates within the new gTLD space. Should you have any immediate concerns as to what to tell the board, please contact your Account Manager directly for further advice.

Colin Darbyshire
Account Manager, Corporation Service Company