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New domains must protect trade marks, says WIPO

But how to stop 'unauthorised' registrations?

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A uniform intellectual property protection mechanism should be established to protect trade marks whenever new generic top-level domains (gTLDs) are introduced, according to the World Intellectual Property Organisation (WIPO).

The recommendation has been made in a report submitted to ICANN, the body that manages the internet’s domain name system, which asked WIPO for expert advice on IP issues involved in the introduction of gTLDs last year.

The seven original top-level domains – .com, .net, .org, .gov, .int, .mil, .edu – were created in the 1980s. In November 2000, seven new names were created: .biz, .info, .name, .pro, .aero, .coop and .museum, and ICANN is now in the middle of assessing ten new proposed gTLDs, two of which, .jobs and .travel, have been approved so far.

But new gTLDs create problems for the owners of trade marks, geographical indicators and other intellectual property rights, who can find themselves competing with cybersquatters to gain control of their mark-related domains.

"The introduction of a new gTLD presents particular challenges for IP owners seeking to protect their domain names against unauthorised registration by third parties. With the growth of internet usage and electronic commerce, the strategic importance of domain names as business identifiers has grown significantly," said Francis Gurry, WIPO deputy director general.

He added that registering their entire trade mark portfolio might often be the only way for IP owners to protect their identifiers from being grabbed by cybersquatters.

Until now their only serious remedy has been to take retrospective action against unauthorised registrations by means of registry dispute resolution procedures or under WIPO’s Uniform Domain Name Dispute Resolution Policy.

WIPO hopes that its new recommendation will complement these existing remedies by preventing unauthorised registrations in the first place.

The report, "New Generic Top-Level Domains: Intellectual Property Considerations", focuses exclusively on the IP aspects that need to be taken into account if and when extensions of the domain name space take place, and does not comment on whether further extensions are necessary or desirable.

The report summarises the WIPO Arbitration and Mediation Center’s domain name dispute experience, and notes that the number of such disputes – based on the case filing rate – has remained stable over the last years and recently even increased. An additional mechanism to prevent unauthorised registration of domain names during the critical introductory phase of a new gTLD would therefore strengthen the ability to combat the still widespread practice of cybersquatting, it says.

Drawing on WIPO’s experience in implementing various IP protection mechanisms in more recent gTLD introductions, the report notes a trend among TLDs towards sunrise mechanisms – which allow IP owners to register their identifiers before the general public.

Experience shows that the need for IP protection mechanisms is most tangible in open gTLDs, which are not subject to clearly defined and policed registration restrictions, and which accept domain name applications from the general public, says the report. The fewer restrictions and prior verification requirements associated with the registration process, the greater the risk of abusive registrations.

It recommends implementing a single uniform preventive IP protection mechanism across all new gTLDs.

Specifically, says the report, new gTLDs should be required to offer IP owners the option of registering their protected identifiers during a specified period before opening registration to the general public. In sponsored or restricted gTLDs where IP owners may not be eligible to register domain names, IP owners could instead be given the option of obtaining defensive registrations during this initial period. Such a uniform mechanism would have a number of advantages:

  • Operators of new gTLDs would not be required to develop their own IP protection mechanisms, a task for which they are not necessarily equipped;
  • ICANN would not be required to monitor the correct implementation of multiple protection mechanisms applied by different gTLDs;
  • IP owners would not be required to devote significant resources to understanding and using multiple different IP protection mechanisms; and
  • The general public would benefit from enhanced reliability and credibility of domains.

Copyright © 2005, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

See: The report

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