.brandTrade Mark Protection in a New

Digital Age

Adrian KinderisChief Executive Officer

AusRegistry International

IPTA Seminar, Sydney

26th October 2010

Agenda

• Speaker Profile

• Introduction to new gTLDs

• Top Level Protection

• Second Level Protection

• ICANN Trade Mark Protection Evolution

• The Application

• The Options

• The Benefits

• Next Steps

• Questions

Speaker Profile

Adrian Kinderis

• Co-Founder & CEO of AusRegistry Group

– AusRegistry – operator of the .au ccTLD since 2002

– AusRegistry International – Domain Name Registry Services Provider

• Member of the Generic Names Supporting Organisation (GNSO) Council within ICANN since 2007

• Contributor to the “birth” of the new gTLD program

• Veteran of the internet community

Introduction to new gTLDs

What are TLDs? (Top-Level Domain Names)

21 gTLDs, including

• .com

• .org

• .net

• .info

• .biz

• .asia

• .edu

• .gov

• .jobs

• .mobi

• .museum

• .travel

example.com

Generic TLD (gTLD)

What are TLDs? (Top-Level Domain Names)

248 ccTLDs, including

• .au

• .nz

• .uk

• .fr

• .de

• .it

• .ru

• .jp

• .cn

• .hk

• .id

• .in

• .kh

example.com.au

Country Code TLD (ccTLD)

ICANN

• Internet Corporation for Assigned Names and Numbers

• Not-For-Profit Public Benefit Organisation

• Foundational principle to promote choice and competition while ensuring Internet security and stability.

1988-1998

• First gTLDs open for registration

• .com .edu .gov .mil .org .net .int

2001-2002

• Second round of gTLDs released

• .aero .biz .coop .info .museum .name .pro

2004

• Third round of gTLDs released

• .asia .cat .jobs .mobi .tel .travel

ICANN Organisational Structure

New gTLD Program

• In 2005, GNSO initiated policy development process for the introduction of new gTLDs

• The policy was completed by the GNSO in 2007, and adopted by ICANN's Board in June 2008

• In 2010, ICANN Board expected to sign off on new gTLD program

Currently21 gTLDs

.com

.net

248 ccTLDs.au

.nz

The Future

Geographic TLDs.sydney

.london

Generic TLDs.web

.home

Community TLDs.redcross

.scouts

Corporate TLDs.anz

.ibm

21 gTLDs.com

.net

248 ccTLDs.au

.nz

The Future

21 gTLDs.com

.net

248 ccTLDs.한국어

.简体中文版

Geographic TLDs

. Сидней.الكشافة

Generic TLDs.لعب

. финансы

Community TLDs.简体中文版

.كرة المضرب

Corporate TLDs.بيبسي

. מחשב

Internationalised Domain Names (IDNs)

Trade Mark Protection

• The internet addressing system allows for 3 levels of domain names:

– www.good.example.com

• These levels are broken down as follows:

– Top Level = .com

– Second Level = example .com

– Third Level = good.example.com

Current Situation

• Top Level

– No Trade Mark protection requirement• No gTLDs that infringe

• Generic Words

• Second Level

– Significant issues• WIPO

• Third Level

– Currently no level of protection

The Top Level

Protection at the Top Level

• The application to ICANN consists of questions to determine reputable operation of the gTLD:

– Proof of good standing

– Background information on Directors, Officers, Partners and Shareholders• Must indicate if been involved in cybersquatting or domain name

related abuse

– Applicants must describe proposed policies and procedures to minimise abusive registrations and negative activity• Safeguards and complaint handling policies

• Description of takedown or suspension systems

Protection at the Top Level

• Public review of Applications– ICANN will post applications for 45 days for public comment and a

summary will be provided to evaluators to conduct their own analysis

• Formal objection process– Will open once applications are published

– Likely open for 5 months

– Objections lodged with dispute resolution service providers (DRSPs)

– 4 types of objections• String contention

• Community

• Morality & Public Order

• Legal Rights

Risks at the Top level

• Multiple organisations can apply for the same or similar name provided the use of the name is consistent with Trade Mark law– E.g. an apple growing organisation can apply for .apple as long as it is not

used in the context of selling computers

• A community group with the same name will be given precedence (community priority)

• If multiple organisations apply and both meet all criteria then an auction will be used to select an organisation to operate the TLD

• Once a name is approved then a confusingly similar name would not be allowed – E.g. if .com exists, .kom may not be allowed

No-one else applies for your brand

Another eligible organisation applies for your brand

Another ineligibleorganisation applies for your brand

Apply for .brand You will acquire .brand providing no valid objections are provided by the community

There would be an auction between all eligible parties providing no valid objections are provided by the community

You will need to object against the other applicant and win or risk that applicant obtaining your .brand

Do not apply for .brand Your .brand is not allocated by ICANN and unclear when/if available again

Another eligible organisation will win your .brand and own it forever

You will need to object against the other applicant and win or risk that applicant obtaining your .brand

Top Level Summary

Irrespective of size or reach of trademarks, ‘eligible’ means anyone with any trademark or legal right to the mark in any country, jurisdiction or industry

The Second Level

Protection at the Second level• A new gTLD must provide pre-launch rights protection

mechanisms (RPMs) that cover either:

– Sunrise Period• Provides Trade Mark holders with a first right to register

• Trade Mark Clearinghouse – central database to store authenticated information for all new gTLD registries

• Substantive evaluation will occur either at registration or at validation and is required on absolute grounds AND use of the mark

– Trade Mark Claims Service• Provides information to a potential registrant of Trade Mark rights

that exist on the particular name

• Trade Mark holders have no additional right over non Trade Mark

holders

Trade Mark Clearinghouse

Protection at the Second Level• Uniform Rapid Suspension (URS)

– The URS gives a trademark holder the ability to make a complaint around a Domain Name that infringes on its trademark

– The registrant of the domain is notified and the URS provider will advise the Registry to have the domain locked within 24 hours, however it remains online and still viewable

– The registrant has 14 days to respond with their defense

– If appeal upheld, name is suspended for the duration of its registration

– If appeal dismissed, name is unlocked and returns to it’s normal state

– Then determination of eligibility is made purely on the materials submitted by both parties – no hearing will take place

• Uniform Dispute Resolution Policy (UDRP) – existing policy

– Results in cancellation of the domain or transfer of the domain name to the complainant

Other Rights Protection Mechanisms

• Post-delegation

– Trade Mark Post-Delegation Dispute Resolution Procedure (PDDRP)• Used to manage situations where a new gTLD operator violates

trademarks at the top level after being allocated the gTLD, or is encouraging systemic cyber-squatting within the gTLD

– Registry Restrictions Dispute Resolution Procedure (RRDRP)• Intended for use where a community-based restricted gTLD registry

operator was not meeting its obligations to police the registration and use of domains within the restrictions stated in the terms of its gTLD registry agreement

Objection Fees

• Dispute Resolution Filing Fee

– A non refundable filing fee of USD1,000 – USD5,000 must accompany

any formal objection or objection response

• Additional Fees

– Additional fees are then payable directly to the applicable dispute

resolution service provider

– Any appeals process would incur a fee payable by the appellant

Risks at the Second Level

• Process required by Trade Mark holders:

– Review each of the new gTLDs

– Decide whether they are related or unrelated to the brand

– On related gTLDs, assess the risk and rate in relation to level of restriction and likely take up

– Analyse the risk rating for each new gTLD and decide protection in order of importance to the brand and company

No-one else registers your brand name

Another eligible person/organisation registers your brand

Another ineligibleperson/organisation registers your brand

Protect your brand in other gTLDs

You will acquire your brand domain name

If they have legal rights then you will lose the opportunity to own that domain name

You will need file a URS or UDRP against the registrant and win or risk them owning your brand Domain Name

Do not protect your brand in other gTLDs

Your brand domain name will remain unregistered

Another eligible organisation will successfully register your brand name

You will need file a URS or UDRP against the registrant and win or risk them owning your brand Domain Name

Second Level Summary

ICANN Trade Mark Protection Evolution

ICANN & Trade Mark Protection

• In the first Draft Applicant Guidebook (DAG):– Trade Mark protection was limited to simple legal rights objections and

the current UDRP process

• In the second version of the DAG:– Extended the protection to unregistered marks

• In the third version of the DAG:– Protection extended to eligibility and the PDDRP process

• In the fourth version of the DAG:– Saw the inclusion of the Trade Mark Clearing House, the URS System and

other RPMs

Implementation Recommendation Team (IRT)• In 2009, ICANN assembled a group of experienced Trade Mark

protection specialists who examined and discussed the ideas such as:– IP Clearinghouse

– Globally Protected Trade Marks List

– URS

– Post delegation dispute mechanisms

– Other Rights Protection Mechanisms

– Whois requirements for new gTLDs

– String confusion

New gTLDs in the Media

Latest Information

In October 2010, The World Trademark Review published these finding of its exclusive survey:

Almost 50% of Trade Mark Lawyers surveyed believe that new gTLDs

are a “good business opportunity

Over 50% of those surveyed support

the Uniform Rapid Suspension System

(URS)

Latest Information

The Application

Application process

• Each new gTLD application will be subject to:

– US$185,000 application fee

– 50 questions requiring detailed answers in relation to:• Technical capability – IPv6, DNSSEC, etc

• Financial capability

• Business Operations

– Rigorous external review by industry experts

– Substantial financial resources needed for operation

– Financial guarantees

Scope of works

Legal

Policy

Financial

Marketing

Business Plan

Guarantees

Technical Infrastructure

The Options

The Options - Summary

Top Level Protection Second Level Protection

Apply offensively for your .brand and maximise the opportunity

Monitor the new gTLD program

Don’t apply for your .brand and avoid the program altogether

Develop internal strategy as to the most relevant new gTLDs to register your Trade

Mark in

Apply defensively for your .brand simply to protect your Trade Mark

Register your Trade Mark in all new gTLDs

Avoid the program altogether

The Benefits• Customers

Engage with your Customers and increase stickiness by offering personalised content and targeted loyalty programs

• FutureProtect your brand, create an identity and change the game forever with a new gTLD

• SecurityWith a .brand TLD you have the keys to the car and you can drive it how you like,

anytime you like and anywhere you like.

• MarketingIt will change the way we all access and utilise the web whilst driving recall and

efficiency of marketing message

johnsmith.telstra

my.myer

secure.westpac

tigerwoods.nike

www.x5.bmw

www.itunes.apple

Next Steps

Questions?

Thank you

Michael TwistAusRegistry International

michael.twist@ausregistry.com+61 3 9866 3710