Ashlee Froese is an Osgoode Hall alumnus and currently practices intellectual property at the law firm of Keyser Mason Ball LLP.
Sibling Rivalry: The intersection of Domain Names and Trade-marks
Domain names and trade-mark owners have always had a contentious co-existence. Whereas trade-mark rights are granted on a use basis, domain names are registered on a “first-come, first-serve” basis. Obtaining a trade-mark registration requires rigorous prosecution; the threshold for obtaining a domain name is very low. Trade-mark rights are granted territorially; domain names are global. Once a domain name is registered, there cannot be any duplicate domain name; identical trade-marks can exist in association with sufficiently disparate wares and services.
The exclusivity of the domain name registration and the “first-come, first-serve” characteristics of the domain name can be a great cause of frustration for trade-mark owners. There are countless examples of unauthorized domain names encompassing 3rd party’s trade-mark rights. Once these domain names are registered, the domain name is no longer available to the trade-mark owner. The practice of registering domain names containing trade-marks, without having a legitimate interest in those domain names, is commonly referred to as cybersquatting.
The World Intellectual Property Office (“WIPO”) recognized this contentious paradigm and instituted, in December 1999, a dispute resolution process, governed by the Uniform Dispute Resolution Policy (“UDRP”). The UDRP is geared solely toward adjudicating between domain name registrations and trade-mark owners’ rights over those domain names. Since its inception, close to 15,000 UDRP complaints have been lodged. WIPO recently reported that the number of UDRP complaints continues to rise with an 8% increase from 2007 to 2008.1 It is likely that this upward trend will continue with the introduction of new gTLD’s.
What is a gTLD?
A generic Top Level Domain (gTLD) is the end component of a domain name (i.e. “.com”, “.net”, “.info”). Whereas some gTLDs are open to any party (i.e. “.com”), others are restricted to qualifying entities (i.e. “.museum”). The plethora of gTLDs currently available (currently totaling 21 gTLDs) is a frustrating factor for trade-mark owners as there are multiple variations of domain names that can be registered that are comprised of a single trade-mark. For example, whereas the trade-mark owner may register the domain name “TRADE-MARK.com”, there are 21 possible remaining domain names containing “TRADE-MARK” that are available. And this does not include country specific domain names, such as “.us”, “.ca”, “.uk”.
A Cybersquatter’s Heyday
After a detailed and lengthy consultation process, the Internet Corporation for Assigned Names and Numbers (“ICANN”) has approved the introduction of new gTLDs. The decision to expand the number of gTLDs stems primarily from the old adage of supply and demand: with 1.5 billion internet users (a number that is ever expanding), increased gTLDs will allow for more flexibility and choice in the selection of domain names.
The creation and ownership of the new gTLDs is not by WIPO or ICANN, but rather through public and private sector organizations who will be required to demonstrate that they meet certain criteria to safeguard cyber-security issues. Once again, this raises issues for trade-mark owners. Trade-mark owners have not been granted a sunrise period to submit their applications for the creation of gTLDs that contain their trade-marks. Trade-mark owners must apply for their gTLD at the same time as every other entity seeking to create and maintain a new gTLD. In the event that a 3rd party applies to create and maintain a new gTLD containing a trade-mark, the onus is on the trade-mark owner to object to the application as ICANN does not provide any notification to the trade-mark owners of such gTLD applications. The proposed new gTLD applications will be published at which point the trade-mark owner can determine whether their rights will be infringed.
What Does this Mean?
Ultimately, the trade-mark owner must be extra vigilant. First, is a 3rd party seeking to create a new gTLD that contains your company’s trade-mark(s)? Assess whether the proposed new gTLD should be opposed. However, the steps involved in the objection process are still unclear.
Second, once the new gTLDs are released, are 3rd parties registering domain names that are confusingly similar to your company’s trade-marks? If yes, consider initiating UDRP proceedings against those infringing domain names. But once again, the onus is on the trade-mark owner to monitor the registration of new infringing domain names.
The silver lining is that UDRP proceedings are relatively inexpensive and time efficient proceedings that have a very high success rate for trade-mark owners. In fact, WIPO estimates that 85% of UDRP complaints are decided in favour of the trade-mark owner.2 The UDRP contains a three-part test to determine whether a domain name is infringing a trade-mark owner’s rights:
1. whether the domain name is identical or confusingly similar to the complainant’s trade-mark;
2. the domain name registrant has no legitimate rights or interests in the domain name; and
3. the domain name was registered and is being used in bad faith.
Generally, the expected turn around from filing the complaint to receiving a decision is approximately 3 months.
1 WIPO “Record Number of Cypersquatting Cases in 2008, WIPO Proposes Paperless UDRP”, March 16, 2009 www.wipo.int/pressroom/en/articles/2009/article_0005.html
2 WIPO “Record Number of Cypersquatting Cases in 2008, WIPO Proposes Paperless UDRP”, March 16, 2009 www.wipo.int/pressroom/en/articles/2009/article_0005.html