IPO PTO Day: the new gTLDs and you

Intellectual Property Owners Education Foundation PTO Day

The New gTLD Launch

Moderator: Wendy Larson, Pirkey Barber PLLC

Mark Partridge, Partridge IP Law P.C.: ICANN approved only a few new gTLDs like .biz and .xxx, but longstanding plan to open up domain name space, detailed in 2008.  ICANN is a nonprofit corporation; operates as a multi-stakeholder model as a point of pride.  New application process is very detailed and expensive—1930 applications, $185,000 filing fee; 1409 unique strings; 1179 applications contested, 751 contested across 230 strings (751 people seeking 230 names). About 34% were .brand: .google, .prudential.  Also generics, .app, .book, etc.  Top applicants: Donuts Inc., a domain name seller; Google and Amazon.  Possible uses—security (.chase) or sold like traditional domain names.

What we expect is final evaluation by June 2013; contract negotiations in second quarter, maybe some sunrise launches.  Third quarter: likely to come online with landrush.

Lisa Ulrich, IBM: IBM applied for .ibm.  Early warnings of problems (.bible) already issued; clarifying questions are likely for everyone, and have issued for geographic names review panel.  Will have a prioritization draw next week: a lottery ticket.  Late Dec.: string similarity review results will be posted.  2013: remaining clarifying questions; background screening; initial evaluation results published in order of priority draw; objection period ends March 13, 2013.

Early warnings: 242 issued for reasons including religion, consumer protection, strings related to regulated markets (e.g., financial), geographic questions.  When the proposed string is controversial or raises national sensitivities.  Public may be able to object, including a TM owner, until March 13.

Other rights protection measures: TM clearinghouse to police TMs—provides notice to potential registrants and TM owners than an applied-for second level domain is identical to a TM in the clearinghouse.  Would allow sunrise registrations—Microsoft could register microsoft.software early, or get notified if someone else did apply for that.

New Uniform Rapid Suspension procedure: clear and convincing evidence that domain name is idnetical or confusingly ismilar to a TM in use, with no legitimate right or interest in the domain name, and used in bad faith; if complainant is successful, registry operator suspend domain name and name servers are redirected to informational page about URS.

Post delegation dispute resolution policy, PDDRP: TM owners can file a dispute against registry operation in connection with first or second level names; must prove by clear and convincing evidence that registry operator takes unfair advantage, impairs character or reputation of the mark.

Thick Whois as another protection.

Recommendations: monitor the published new applications; submit at least your most important marks to the TM clearinghouse for second-level domains—apply for second level domain.

Partridge: even if you didn’t apply, now is the time to consider your strategy. Will you want defensive registrations?  Applications for .sucks: how will your company feel about mycompany.sucks?  If that’s concerning, time to think about defensive registration in that space, meaning you need the TM clearinghouse.  Also figure out your dispute strategy: UDRP, URS, ACPA.

Susan Anthony, USPTO: Do we know how many applications were filed by brand owners who don’t intend to run a real registry?

Partridge: No; they all say they have some real intent, but some companies thought they needed to file now even if they didn’t know what they were going to do, since we don’t know when a second round would open up.  Two applications by the same company for the same domain—why?  One is closed (they’re the only one who gets it) and the other community-based (which gets priority in processing).

Larson: how many applications are closed?

David Roache-Turner, WIPO: about 500 are expected to be open, 900 closed. 84 noncommercial community; 60 different countries represented, some in non-latinate script.

Along with objections discussed above, a couple of others.  Good old UDRP, of course, will apply to all gTLDs.  UDRP continues to burble along; most complainants win (90%), but three-member panel decisions are substantially more likely to result in a denial (only 55% agree with complaint).

Legal Rights Objections: give brand owners opportunity to object to gTLD applications that conflicted with its rights—requires either registered or unregistered TMs.  Independent panel would determine whether potential use would be likely to infringe by (1) taking unfair advantage of the distinctive character or reputation of the mark; (2) unjustifiably impairs distinctive character or reputation; or (3) otherwise causes likely confusion.  Factors for consideration include similarity, public recognition, applicant’s knowledge, applicant’s rights in the string (such as preexisting TM rights), etc.  Costs $10,000 to file one, and $10,000 to file a response; the successful party can get a partial refund.

Partridge: UDRP is effective/efficient, so why something else? The concern was that there are a high level of defaults.  Multiple opportunities with new gTLDs for large numbers of cybersquatters—led to proposal for quicker, cheaper basis than UDRP, which is designed for an inter-party dispute with both sides participating.  (This explanation seems to contradict itself.)  The procedure did morph and get more complicated as it developed; its effectiveness remains to be seen.

Roache-Turner: 70% UDRP defaults. By the time URS came out of ICANN, made no provision from differentiating in procedure or substance from a default and a non-default, and that’s a problem.  We’ve been urging ICANN to look at ways to simplify the process; more complicated than UDRP and delivers a less effective remedy.

Larson: UDRP default doesn’t mean complainant inherently wins; URS rules seem to be different.

Roache-Turner: Under URS, it’s the UDRP rule.  Under LRO, default = complainant wins.

Partridge: LRO involves a respondent who has the means to defend rights if it wanted to; paid $185,000 filing fee, after all.

Anthony: The internet is not broken.  Governance has been misused; we are talking about administration and management. 

Roache-Turner: ICANN is the worst possible place to manage the internet except for the alternatives.

Anthony: also counsels against us v. them attitude: we are all ICANN.  ICANN is often in the untenable position of having to offer advice after a policy or activity has truly matured, and then we look like naysayers.

Australia has filed the most early warnings; there is no requirement that a government do so, but it’s still a good idea so that the applicant can talk to the government.

Consider the reason we did this in the first place: people wanted new gTLDs because they thought there were insufficient spaces.  We need to educate people so that they can take best advantage of the new spaces.

Governmental Advisory Committee advice.  The early warning system exists; governments can also file objections; then there’s GAC.  We’re concerned about improving the timeline in which the GAC is brought into the policy issues.  Doesn’t know what will ultimately happen, but Board will have to explain itself if it rejects GAC advice.

What protection should we grant to certain organizations at first and second levels?  Long and checkered history with Olympics, Red Cross, then IGOs.  GAC said the first two should get special protection, then recently came up with a solution to the IGO issue; .int would be a good way forward to explore what IGOs should be entitled to first and second level protection.  ICANN initiated a policy development process; TM holders hate that because it’s lengthy and we may lose at the end of the day, but it’s designed to ensure all voices are heard.  A working group has been initiated.  GAC is asking why they think there needs to be a PDP.  Should there be a reserved list of protected entities?

Hon. David Kappos, Director, USPTO

Many patent statistics; TM filing rates are up over the past few years.  Praises the performance on quality metrics.  “Exceptional Office Action”—measuring fraction of cases that don’t just meet all legal requirements but are actually perfect/comprehensive in quality of first Office action serach, evidence, writing, and decision making: FY 2012 target of 20%, results of 26.1%.  Trying to process all TM applications electronically—over 75% paperless (not just applications but the whole process).

Kappos also touted the US’s role in putting together a norm (treaty) for exceptions/limitations for the visually impaired—though the US is also leading in opposing non-text exceptions/limitations, which he didn’t mention—and in promoting a performers’ rights treaty and protection for broadcast signals (the justification for which no one has ever been able to explain to me).