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Effective Rights Protection Mechanisms for the New gTLDs. Bart Lieben Partner, Laga Intellectual Property, Technology, Media and Telecommunications Law. Contents. Setting the Scene.

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slide1

Effective Rights Protection Mechanisms

for the New gTLDs

Bart Lieben

Partner, Laga

Intellectual Property, Technology, Media and Telecommunications Law

setting the scene
Setting the Scene
  • A Rights Protection Mechanism in the context of domain names is a process whereby owners of intellectual property rights (in particular trademarks) can safeguard their rights in a new internet extension;
  • Numerous brand owners have expressed their concerns about ICANN’s New gTLD Program, and in particular with respect to the absence of the requirement in the Draft Applicant Guidebook to have a Rights Protection Mechanism;
  • During the Cairo Meeting, Dr. Paul Twomey expressed the idea of having a system in place on the basis whereof brand owners could secure their rights in connection with the New gTLDs;
  • On the basis of our experience in setting up and managing rights protection mechanisms in various ccTLDs and gTLDs, we have been working on such a system during the last two years.
our experience in managing rights protection processes
Our Experience in Managing Rights Protection Processes
  • Deloitte is the largest professional services firm in the world
  • Laga is one of Deloitte’s aligned law firms
  • Our team members have been or are assisting the following registries in designing and managing their rights protection processes in the past:
  • We have an unparalleled experience in conducting and managing effective and workable domain name dispute resolution processes in the context of RPM Processes
things could be simple
Things could be simple …
  • “Connect the systems of the Back-End Registry Operator to the database of the USPTO …”
  • “You just copy/paste trademark information in the domain name application …”
  • Let the trademark owners police Sunrises themselves
    • processes whereby IPR Owners could exclude fraudulent Sunrise applications (.INFO, .BIZ) failed largely
    • similar processes in the New gTLDs would require IPR owners to scrutinize possibly +500 new extensions!
but intellectual property rights are rather complex
But intellectual property rights are rather complex …
  • Trademarks
    • Different systems: state (e.g. in the U.S.), national, regional (e.g. Europe, Benelux, …), international (Madrid System)
    • Different types of signs: word marks, figurative marks, complex signs, …
    • Different registration procedures, some of which could encourage speculation;
      • e.g. in the Benelux, a trademark can be registered within 48 hours after filing the trademark application
  • What with other intellectual property rights, such as trade names, company names, etc., which enjoy protection in some countries?
    • need to include these in the context of local initiatives, such as CityTLDs
  • Cybersquatting goes beyond practices like trademark.xyz
    • typosquatting, “sucks” cases, wwwtrademark.xyz, trademarkcom.xyz, …
but intellectual property rights are rather complex7
But intellectual property rights are rather complex …
  • Lack of harmonization between the various legal systems implies that an in-depth knowledge is required of all these legal systems, trademark registration processes, etc.;
  • Limited availability of on-line databases, which implies that a large number of IPR claims must be validated against documentary evidence (differences in legal systems, languages, …);
  • The fact that the complexity of Intellectual Property Rights are not too well understood is proven by the fact that in the Sunrise processes that were managed by us, the total number of domain name applications contained erroneous information exceeded 50%;
  • Therefore, “automating” an RPM process without human intervention and scrutiny would be disastrous for a registry and the IPR owners
basic working model for future rights protection mechanisms step 1
Basic Working Model for Future Rights Protection Mechanisms – Step 1

Registrars

IPR Data Input

Feedback

IP Owners

Trademark

Lawyers &

Agents

Central

IPR

Repository

IPR Claim Validation System

Validation

Agent

basic working model not exhaustive
Basic Working Model (not exhaustive)

IPR Details

- IPR Type: registered trademark, unregistered trademark, company name, etc.

- Application Date (trademarks)

- Registration Date (trademarks)

- Incorporation Date / Date of Establishment (companies, organizations)

- Type of Sign: word mark, device mark, etc.

IPR Owner Information

  • Registered Owner / Company
  • Address of Registered Owner / Company
  • Country
  • Administrative Contact
  • Contact Information (email, phone, fax, …)

Central

IPR

Repository

Authorised

Registrants

  • Reflection of Device Mark in Domain Name (generic rule, removal of non-distinctive elements, …)
  • Special Characters (&, +, !, …);
  • Existing Extensions (.com, .org, …)
  • Company types (Inc., LLC, SA, …)
  • Similarity checks (Lebenstein, typo’s, …)
  • Trademark Licensee
  • Trademark Owner (if other than registered owner)
  • Parent Company / Subsidiaries
  • Unique Reference Number
  • Nice Classification / Activity Code
  • Previous cybersquatting cases
  • Registrar contact information
  • Validated Domain Name Applications
  • Other Domain Names Registered
  • Other Authorized Registrars

IPR Evidence

  • Evidence of Trademark Registration
  • Evidence of Use of Trademark
  • Evidence of Incorporation / Establishment of Company / Organization

RPM Policy

Rule-Sets

Other

basic working model for future rights protection mechanisms step 2
Basic Working Model for Future Rights Protection Mechanisms – Step 2

Registrars

Registry

Submit Domain

Name Application

+ IPR Claim

IP Owners

Trademark

Lawyers &

Agents

Central

IPR

Repository

Pull Domain Name

and IPR Information

Verify IPR

Claim

If claim could not be

automatically verified:

instruction to validate

Add record

Communicate

findings

Request info

(if needed)

Validation

Agent

basic working model for future rights protection mechanisms step 3
Basic Working Model for Future Rights Protection Mechanisms – Step 3

Registrars

IP Owners

some information can be changed / updated

without involvement of validation agent

Trademark

Lawyers &

Agents

Central

IPR

Repository

Validation agent

informs registrar,

IP owner or

representative of

changes and possible

future issues

IPR Claim Validation System

other new or updated

information must

undergo validation

Validation agent

verifies accuracy

of information on

a regular basis

Validation

Agent

basic working model for future rights protection mechanisms other uses
Basic Working Model for Future Rights Protection Mechanisms – Other Uses

Registrars

Registry

Registrars can

use the database

as their

IPR back-office

Registrars can use the

Central IPR Repository

in order to warn a registrant

when he or she wants

to register a domain name

containing a trademark,

company name, …

Registry can continue

to use the database

for its own and/or ICANN

Policy Compliance

purposes

Central

IPR

Repository

Validation

Agent

about our central ipr repository
About Our Central IPR Repository
  • Currently, our systems hold about 50,000 validated records of registered trademarks, company names, etc. that have been used during previous Sunrise processes;
  • Anti-abusive registration measures (variations, typo’s, combinations) bring the number of domain names that can be secured / policed / … to up to 5,000,000;
  • Interfaces will be made available to registries, registrars, IP owners and IPR agencies / law firms
  • Registries remain free to set their RPM policies, since our records have been verified against most – if not all – rules that are meaningful in the context of an RPM process
about our central ipr repository14
About Our Central IPR Repository
  • Features that will be available for registrars, IP owners, IPR agencies and law firms:
    • option to lock record to one registrar, or appoint multiple registrars to use the same record
    • option to add additional information which could be useful for integration into proprietary IPR management tools
    • messaging service between various parties implied into the different processes
  • Assistance can be provided to Registries in the drafting of their RPM processes, as well as in the building of their propositions towards the IPR community
    • free domain name registrations for IPR owners
    • blocking of domain name registrations containing trademarks, company names, …
  • Possible additional steps they wish to implement can be linked in
about our central ipr repository15
About Our Central IPR Repository
  • Complexity of Intellectual Property Rights will be entirely shifted to us
    • registrant does not need to be concerned whether or not his or her data is accurate and/or acceptable, since advance warnings will be sent out
    • registrars do not need to deal with complex IPR issues
    • only basic data will be required, i.e. data that registrars handle on a day-to-day basis
  • A fee will be charged to the party submitting IPR data to the Central IPR Repository
    • one-time set-up and validation fee;
    • annual fee for:
      • keeping records up-to-date,
      • change information,
      • obtain status updates and advance warnings,
      • etc.
basic working model for dispute resolution
Basic Working Model for Dispute Resolution
  • Proven IPR Claim Dispute Resolution Process in place, which is entirely managed by us
  • Used in the context of the .NL, .ASIA, .TEL, and .CO.NL processes
  • Features:
    • fast:
      • it takes, generally, less than one day to prepare and file a complaint
      • it takes less than one day to provide for a response
    • cost-efficient:
      • less than half of the charge for a proceeding under the UDRP
conclusion
Conclusion
  • Many (corporate-focused) registrars and trademark owners support our solutions, because of their effectiveness, our expertise, and our reputation in the marketplace
  • Absence of an ICANN-prescribed Rights Protection process should not impede ICANN’s New gTLD Program: the Central IPR Repository and Dispute Resolution Processes that we have developed and implemented are
    • cost-effective for the IPR Owners
    • risk-free and easy to use for the registrars and registries
    • easily accessible for the various parties concerned
  • Depending on how the new registries will implement their Rights Protection processes, the new gTLDs should have very little impact on trademark owners
slide18

Contact Details

Bart Lieben

Partner, Laga

Berkenlaan 8a

1832 Diegem (Brussels)

Belgium

tel. +32 (0)2 800 70 00

fax. +32 (0)2 800 70 01

cell +32 (0)473 910 621

[email protected]

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