Cosmic Shift Coming Soon to Internet Domain Name System

July 12, 2011 Keith Barritt, Principal, Washington, DC Cynthia Walden, Principal, Boston

Agenda

New Generic Top-Level Domains (gTLDs) Determining the Best Approach for Protecting Your Marks in the New gTLD Space “Internationalized” Domain Names Developing an IDN Strategy

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Some Terminology

ICANN = Internet Corporation for Assigned Names and Numbers Generic Top-Level Domain (gTLD) = immediately to the right of “the dot” (apple.com) Country Code Top-Level Domain (ccTLD) = usually two-letter ISO country code immediately to the right of the “the dot” (apple.uk) Second-Level Domain Name = immediately to the left of “the dot” (apple.com)

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New Generic Top-Level Domains

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New Generic Top-Level Domains (gTLDs) Virtually unlimited potential new gTLDs

– Latin or Non-Latin script: .pharma, .music, .wine? .yourtrademarkhere?

– Non-Latin script versions of .com, .net, etc. (if applicant is right)

Potential to exponentially expand domain name space for better or worse

– Applications accepted January 12 – April 12, 2012

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“Applicant Guidebook”

6 “Modules” – Introduction – Evaluation Procedures – Dispute Resolution Procedures – String Contention – Transition to Delegation – Terms and Conditions of New TLD Application

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Who May Apply for a New gTLD?

Only corporations, organizations, or institutions “in good standing” Filing fee alone is $185,000 Must demonstrate financial strength, plus technical and operational capability to run new gTLD (e.g. Verisign for .com)

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Availability of Domain Names Under New gTLDs Different registries may have different policies

– Open to all (.websurfer) – Restricted to members of a certain community (.pharmacist) – Restricted to members of a particular company (.exxon)

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4 Grounds for Public Objection to Proposed New gTLD String Confusion Objection

– New gTLD is confusingly similar to an existing TLD or another applied-for TLD

Community Objection – Substantial opposition to gTLD application from a significant

portion of the community that the gTLD may be explicitly or implicitly targeting

Limited Public Interest Objection – gTLD is contrary to generally accepted legal norms of morality and

public order that are recognized under international principles of law

“Legal Rights” Objection – Trademark or perhaps other rights are infringed by the gTLD

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“Legal Rights” Objection to New gTLD

WIPO has agreed in principle to serve as a dispute resolution provider 30 days for an applicant to respond to a complaint Automatic default judgment if no response is filed All electronic All English

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Standards Used in “Legal Rights” Objection Does the applied-for new gTLD:

– Take unfair advantage of distinctive character or reputation of mark?

– Unjustifiably impair the distinctive character or reputation of mark?

– Create impermissible likelihood of confusion with mark?

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Factors Used in “Legal Rights” Objection to New gTLD Factors to consider:

– Similarity in sight, sound, meaning of new gTLD and mark – Trademark owner’s bona fide acquisition and use of mark – Recognition in “relevant sector” of public of mark – Applicant’s intent, knowledge, and pattern of abuse – Applicant’s bona fide efforts to use the new gTLD as a mark – Applicant’s rights in a mark corresponding to the new gTLD

and whether proposed use of gTLD is consistent with such rights

– Whether applicant has been commonly known by new gTLD – Whether new gTLD would cause confusion as to source,

sponsorship, affiliation, or endorsement of the gTLD 16

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Post-Delegation Objections to Domain Names Within New gTLDs Based on Trademark Rights UDRP will apply But other “rights protection mechanisms” exist TMC, Sunrise, Notice, URS, PDDRP, RRDRP (huh?)

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Trademark Clearinghouse

New central database for: – Registered trademarks – Court-validated common law trademarks – Trademarks protected by treaty or statute – “Other marks” (as permitted by registry of particular new gTLD)

May consist of two entities (validator and administrator) Registration in TMC required for some rights protection mechanisms, and can be used to streamline others Information must be maintained and renewed periodically or else “penalties”

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“Sunrise” Registration Period

Preference for Domain Names for Marks in TMC

– Minimum of 30 days prior to general launch – Registered marks must include “proof of

use” in TMC – Only for “identical match” of textual

elements of mark – Notice to mark holder if someone else

seeking Sunrise registration

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“Trademark Claims” Service

Notice Provisions for Marks in TMC – Minimum of 60 days after general launch – Registered marks do not need “proof of use”

in TMC – Only for “identical match” of textual elements

of mark – Notice to domain name applicant of rights

claimed – Notice to trademark owner if applicant

registers domain name anyway

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“Uniform Rapid Suspension” (System) Challenge to Domain Names URS supplements, does not replace, UDRP Idea is to allow inexpensive, rapid take down of websites that are clearly abusive Must prove by “clear and convincing” evidence that:

– Domain name is identical or confusingly similar to existing trademark

– Domain name owner has no rights or legitimate interests in the domain name

– Domain name has been registered and is being used in bad faith

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URS (cont.)

URS complaints may be based on: – marks in TMC – marks otherwise eligible for inclusion in TMC – in either case, requires evidence of use for registered marks

Form complaint, plus 500 words of free text Response within 14 days (plus 7 days if good faith basis), limited to 2500 words Decision in 5 days

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URS Not Perfect

Problems with URS: – Greater burden of proof (“clear and

convincing”) – Lesser remedy (suspension only rather than

transfer) – Domain name owner can respond up to six

months late (plus an additional six months upon request) and receive de novo review

– If complaint found “abusive” trademark owner faces penalties

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Post-Delegation Dispute Resolution Procedure TM owners may challenge new gTLD registry operator based on clear and convincing evidence of bad faith with intent to profit from abuse of gTLD or domain names within gTLD Not to be used against registry merely containing infringing domains Requires prior notification to registry and willingness to meet to resolve Registered or common law marks injured by registry’s “manner of operation or use” of the gTLD “Top-Level” and “Second-Level” name challenges permitted 25

Post-Delegation “Top-Level” Disputes Based on Trademarks Registry’s conduct in operation or use of gTLD that is identical or confusingly similar to trademark(s) that:

– Takes unfair advantage of distinctive character or reputation of mark

– Impairs the distinctive character or reputation of mark – Creates likelihood of confusion with mark

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Post-Delegation “Second-Level” Disputes Based on Trademarks Substantial pattern or practice by registry of specific bad faith intent to profit from systemic registration and sale of infringing domains within the gTLD that are identical or confusingly similar to trademark(s) that:

– Take unfair advantage of distinctive character or reputation of mark

– Impair the distinctive character or reputation of mark – Create likelihood of confusion with mark

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Registry Restrictions Dispute Resolution Procedure Registry operator of community-based restricted gTLD not adequately enforcing restrictions

– Undeserved domain names would tarnish and harm deserving domain name owners

Initial informal complaint required to give registry a chance to act Possible Sanctions

– Monetary sanctions – Prevent future noncompliant registrations – Suspension/termination of registry agreement – Deleting registrations may not be an option since domain owners

not parties Not to replace ICANN contract compliance

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Determining the Best Approach for Protecting Your Marks in the New

gTLD Space

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Is it a Good Thing or a Bad Thing?

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How Do You Decide Whether to Register a New gTLD? Do you have the budget for the buy-in?

Do you want to operate a registry (or contract someone else to do so)? Are there other trademark/domain name/advertising projects on which you could make better use of this money?

Will it help your business? Is it a useful new branding opportunity?

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Why Would You Want to Register a New gTLD? New branding opportunity

If the new gTLDs are widely adopted, it may be both useful and necessary to participate in this new space

To keep others from doing so

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Why Would You Not Want to Register a New gTLD? No budget to do so Significant on-going annual registry operation costs No interest in operating a registry Do not see the benefit in doing so (you have the .COM already and everyone uses search engines to locate the sites they are looking for anyway)

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What are Costs Associated With Defensive Mechanisms if You Choose Not to Register? Trademark Clearinghouse/Notice - TBD

Monitor sunrise periods - TBD

Uniform Rapid Suspension (URS) - TBD

PDDRP - TBD

RRDRP - TBD

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When Can Defensive Action be Taken?

NOT YET. BUT STAY TUNED!

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Steps for Monitoring New Domain Names Register eligible marks with the Trademark Clearinghouse Implement protocol for handling notice of infringing domains Implement system to monitor Sunrise periods Devise game plan for when to take action to protest a new gTLD or second-level domain and when to stand down Discuss objectives internally and run it up the flag pole proactively Start raising awareness within your company now regarding the new gTLDs

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Internationalized Domain Names

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“Internationalized” Domain Names (IDN) Domain names represented entirely

by non-Latin script language characters such as Chinese, Arabic, Cyrillic, etc.

실례.테스트 (“example.test” in Korean)

– Majority of world’s Internet users do not use Latin script in native languages

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IDNs Available via Two Routes

IDN TLDs will be made available through two separate processes:

(1) forthcoming New gTLD Program (2) existing IDN ccTLD Fast Track

Some ccTLDs already allow use of local languages to the “left of the dot”

e.g. http://실례.kr in South Korea

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IDN ccTLD Fast Track

Allows top-level domains in non-Latin scripts of local official language for the country/territory name (not just the two letter ISO designation)

– Рф = RF = Russian Federation – AlSaudiah = Saudi Arabia = السعودية

Helps establish “proof of concept,” gain experience To be replaced eventually by long-term IDN ccTLD program

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Who May Apply for a Fast Track IDN ccTLD? The request can be submitted by either:

– Government – “Selected delegate" who must be supported by either

the government or other relevant local authority Applicant must meet the standard criteria for ccTLD delegation utilized for existing ccTLDs

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Appropriate IDN ccTLDs

A proposed IDN ccTLD must: – Have government and local Internet

community support – Be in the country's official language and be

a meaningful representation of the country's name

– Pass technical evaluation – Not be confusingly similar to an existing

gTLD or ccTLD

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IDN “Variants”

How to represent where variants exist? (e.g. “f” and “F” in English)

Variant TLDs will not be delegated initially

Variant domain names under an IDN ccTLD will be decided by the IDN ccTLD manager and not ICANN

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IDN ccTLDs Domain Names

Rules will vary by country, as with existing ccTLDs

Rules set by local Internet community, not ICANN, using mechanisms that have been set up by the sponsoring organization of the top-level domain

No guarantee owners of trademarks or existing ccTLD domain names will get preference

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IDN Trademark Concerns

Concern in trademark community for domain names:

– Preference (or not) for existing trademark/ccTLD domain name owners

– Availability of variants – Cybersquatting/enforcement – Difficulty of monitoring – Potential explosion of need for

“defensive” registrations

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Developing an IDN Strategy

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Key Considerations in Developing an IDN Registration Strategy Focus on the countries where your company has significant sales or plans for growth Include countries where your company has a place of business

Register and use your trademarks in Non-Latin script in these countries to support registration and enforcement efforts

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What are the Benefits of IDN Registration? Ability to reach much larger audience of potential consumers

Better ability to protect against infringing registrations and use of your marks and domains by others

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Wrap Up

Registration and operation of new gTLDs is likely cost prohibitive for most companies There will be a number of mechanisms for protecting your marks from infringing use by others Registration of your trademarks and domains in Non-Latin script is important in a growing global marketplace Register your marks with the Trademark Clearinghouse, monitor Sunrise periods and domain applications Budget for defensive actions in 2012 and beyond

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The New TLDs are Coming

Can ignore . . . get burned . . . or own new beachfront property?

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“Have you picked out a domain name yet?”

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Contact Us

Keith Barritt, barritt@fr.com Principal, Washington, DC

Cynthia Walden, walden@fr.com Principal, Boston

© Copyright 2011 Fish & Richardson P.C. These materials may be considered advertising for legal services under the laws and rules of professional conduct of the jurisdictions in which we practice. The material contained in this presentation has been gathered by the lawyers at Fish & Richardson P.C. for informational purposes only and is not intended to be legal advice. Transmission is not intended to create and receipt does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel. For more information about Fish & Richardson P.C. and our practices, please visit www.fr.com. 52

Cosmic Shift Coming Soon to Internet Domain Name System

July 12, 2011