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ICANN New gTLD ProcessTime to adjust your strategy to a new reality?Nick Wood, ValideusEgon Engin-Deniz, CMSLuca Barbero, Studio BarberoAndrew Denholm, UBS
Our programme1. Overview of the new gTLD process
Nick Wood, Valideus
2. Legal Rights Objections to applications at Top LevelDr Egin Engin-Deniz, CMS
3. Overview of Rights Protection MechanismsDr Luca Barbero, Studio Barbero
4. Long Term protection at the Second levelAndrew Denholm, UBS
Overview of ICANN New gTLD Process
Nick WoodMD of Valideus & Com LaudeMember of MARQUES CouncilVice Chair of CyberSpace Team
Agenda
• Background• About ICANN• Who is applying?• How the internet will change• Scale of the changes• Timing• Costs• Application process• Why brands are considering applying
About ICANN
Internet Corporation for Assigned Names & Numbers• ICANN a not for profit corporation based in California• ICANN administers domain name system & directly manages 22
generic Top Level Domains (gTLDs such as .com, .org, .net, .biz ) • Sets technical standards that 270 country code Top Level Domains
(ccTLDs) adhere to (.at, .be.ch, .de, .es, .fr)
ICANN’s Mission: “To enhance competition and promote choice and innovation”
Losing the dot
ICANN is liberalising the gTLD system
A permissive application programme to allow anyone, anywhere to apply to run their own gTLD registry
• .google as well as google.com• www.search eric@google
ICANN plans round after round of new gTLDs: this is first stage of long-term plan - early adopters have at least 3 year advantage.
Regional domain applicants
City domain applicants
Private brand applicants
Not for Profits
“Taking the long view, as time goes on a name such as www.donations.unicef and www.cards.unicef will become more intuitive in a more crowded Internet, and thus more valuable because the name reflects exactly that of an organization and declares what it does.”From June 2010 RFP
Keyword domain applications
How will the Internet change?
• ICANN predicts:• Search providers take account of new gTLDs in algorithms• Registries to create innovative new services• Consumers to own affiliate domains with favourite brands• Non-political gTLDs effective in age of mobile & social media• Super-fast servers in world root provide enhanced security
Scale of the opportunity
ICANN says it expects 500 applications in 1st round• However ICANN budgeting for 1,000 applications
Advantages not immediate
For next three years at least:
• .com will remain powerful and most important domain• Navigation via intermediaries (search & content providers) to
continue. • Many Internet lives spent largely within social networks• Changes to browsers, search engines, drop down boxes
requiredBut early adopters could have 4 year lead
What can you do with a new gTLD?
Some initial use cases:• Replacing patchwork of existing domain registrations with one global address• Creating a private secure space / corporate intranet• Creating a distinctive site for mobile devices• Developing a proprietary social network site• Turning a free service into a paid for service with Premium Features• Creating a site for dialogue with younger customers, potential employees • Provision of domains to partners & licensees to maintain control • Communication of sensitive financial data between network of global offices• Adding geo-location services to tailor content more appropriately• Using the speed of the DNS to deliver digital services very quickly• Supporting sites across ‘four screens’: phone, tablet, pc, tv• Establish a brand in a local language script in key market – e.g. Chinese
Key Dates
No more than six months to prepare an application; 18 months before first of new registries open
• 12 January 2012 : 90 day application window opens;• 12 April 2012: Application window closes;• 27 April 2012: ICANN publishes list of applicants and
character strings; Evaluation starts; Objection period opens
• November 2012: New gTLD registries start to be approved
6 months to prepare
How much?
Official fees to ICANN• Application fee: US $185,000 payable in two phases: $5,000 to
register the application; $180,000 on application• Financial guarantees required - irrevocable Letter of Credit for
cost of maintaining critical registry functions for three years (e.g. $120k pa)
Once registry is open:• US $6,250 per quarter to cover up to 50,000 domains per year;
then US $0.25c per domain per year after this threshold• Contribution to costs of Clearinghouse (small)
Further costs
Outsource service providersRegistry Services Provider to supply ICANN compliant technical infrastructure & services including Registry System and DNSEscrow providerProfessional fees: Legal & ConsultancyLifecycle management of your registry
The Big Picture
Across two years of Application Management & Pre-Delegation Testing and three years of operation: $750k - $1m depending on type of registry
Average of $200k per year for Registry for brand use only, closed to third parties with c.10,000 domains
(No costs for registering & deleting within your registry)
Process Presumes Approval
Applications submitted by technically, financially, and operationally qualified applicants approved unless term is:
1. Confusingly similar to existing TLD or Reserved Name;2. Geographic Name and no documentation of support/non-
objection from relevant government; 3. Competing applications for same string; and/or
4. Third party asserts successful objection.
50 Questions
41 points available across 20 Technical & 5 financial questions with pass mark of 30
Many answers published & length of “complete answers” suggested Question 18 “Describe the Mission & Purpose of your gTLD” including
setting out policies. This is your charter so you must:• present a coherent use case for your gTLD• avoid innovation which will be viewed as controversial by ICANN• present a narrative which enables you to expand or contract your use of
a new gTLD in line with Best Practice and public acceptance of new gTLDs
The future of the internet
About internet branding and marketing5 reasons why brand owners are considering application in 1st round:
1.Communication2.Security3.Competitive advantage4.Platform for innovation5.Running an open registry can be profitable
Communication advance
The cutting edge of digital branding• You are in charge: a bold statement of confidence for clients and
shareholders, reinforcing branding, commitment to innovation
• Single global address: from the Billboard to the Browser• Dot com too American• ccTLDs associated with governing regimes
• ngTLD registries to be recognised as authentic by search engines.
• Keeps you ahead of (or in pace with) competitors
• Shorter address for mobile
Security benefits
“If it does not end in Baveno, it’s not Baveno”
• Secure platform for communications with consumers: all new gTLDs must run DNSSEC
• Your registry, your policy: who is in, who is out – no infringers
• Your registry can be based anywhere – favourable jurisdiction
• Puts you in charge of critical internet infrastructure: ends dependency on 3rd party registries so advantages of stability
Competitive advantage
“Permanent String Preclusion” – you must not get locked out of a valuable address
• Do you compete with a 3rd party with a legitimate right to a key mark or term? ABC, BBC or CBC? NHL or DHL?
• If competitor applies for a generic term covering a business area of yours, how will you react? Hotels News Health
• You cannot buy a registry from a successful applicant & the second round may be five years away
Platform for innovation
Ownership of servers at core of internet enables super fast, secure delivery of dataDomain name servers offer many possibilities: not just MX & A records
Other resource records offer advantages of security & speed:LOC (geo-mapping), NAPTR (which .TEL used to hold contact information), CERT (for holding e.g. employee mail certificates), IPSECKEY (keys for a VPN), SRV (load balancing for firewalls etc), SPF (Sender Policy Framework, anti-spam), SSHFP (Secure Shell Hostkey Finger Prints for secure system access)
Running a profitable registry
205 million registered domains; 99,000 pre-registrations with .xxx; 1 million .co in 12 months
Some brand owners considering Open Registries perhaps for a generic term and selling domains to interested parties
Imagining the future
Short Term• A new gTLD in parallel with.com (not to replace)• Reserving strategic options to exploit in future• Early use case required • Strategies for governance• Strategy needed to protect IP across 500+ new registries
Long Term• Rebranding from.com to dot Brand• Advantages of speed, communication, security• Greater voice in ICANN so better brand protection in DNS
Legal Rights Objections to new gTLDs & the Comments Process
Dr. Egon Engin-DenizPartner, Head of IP, CMS ViennaMember Marques CyberSpace Team
Agenda
I. Objection GroundsII. Objection Procedure
• Filing• Applicant‘s reaction• Dispute Resolution Process
III. Legal Rights ObjectionIV. Comments Period
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I. Formal Objection GroundsThe 4 grounds for a formal objection:
1. String Confusion Objection• Confusing similiarity to an existing TLD or another applied-for TLD string• International Center for Dispute Resolution as Dispute Resolution Service Provider “DSRP”
2. Legal Rights Objection• Infringement of existing legal rights• to be filed with the Arbitration and Mediation Center of the WIPO as DSRP
3. Limited Public Interest Objection• TLD is contrary to generally accepted legal norms of morality and public order• to be filed with the International Center of Expertise of the ICC as DSRP
4. Community Objection• Substantial opposition from a significant portion of the community targeted by the gTLD • to be filed with the International Center of Expertise of the ICC as DSRP
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II. Objection Procedure Filing• Electronic filing with the appropriate institution• Objection filing period: approximately 2 weeks after the close of the
application window (will be shown at www.ICANN.org)• Several objections must each be filed separately• Required:
• Name and contact information of the objector• A statement on the basis for standing• Specific ground and detailed explanation on the validity of the objection
• Dispute Resolution Filing Fee: • To be set by the relevant DRSP• ICANN estimation: USD 1,000 – USD 5,000 or more
• Publication of all objections on ICANN website and notification of the parties
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II. Objections: Applicant reactions• Withdrawal of the application• Settlement
• Resulting in withdrawal of either objection or application
• Filing of response • Leads to dispute resolution process• Must be filed within 30 calendar days of the notification• Fee: identical to filing fee for the objector• Lack of response results in prevailing of the objector
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II. Objection Procedure: DRS
• Mediation encouraged, but not mandatory• Relevant DRSP decides in a Panel of Experts
• Usually no in-person hearing
• Burden of proof lies with the objector
• Dispute Resolution cost:• Advance payment of estimated total cost by each party• Prevailing party will be refunded
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III.Legal Rights Objection
• Objection by rightsholders of registered and unregistered trademarks, service marks, IGO names and acronyms
• Filing with the Arbitration and Mediation Center of WIPO as DSRP• Model complaint provided online at www.wipo.int• Must include source and documentation of existing legal rights
• Fees:• Filing fee for objector and responding applicant: USD 2,000 if a single-
expert panel decides, USD 3,000 if a panel of three decides• Dispute resolution panel fee: USD 8,000 in case of a single-expert
panel, USD 20,000 in case a three-expert panel
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III.Legal Rights Objection
• DSRP’s panel of one expert (option of three if agreed by the parties) determines whether the potential use:• takes unfair advantage of the distinctive character or reputation
of the mark or IGO name or acronym or• injustifiably impairs the distinctive character or reputation of the
mark or IGO name or acronym, or• otherwise creates an impermissible likelihood of confusion
between the applied-for gTLD and the mark, IGO name or acronym.
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III.Legal Rights Objection
• In case of trademark rights the following non-exclusive factors will be considered:
• Similarity of the gTLD to the trademark (including in appearance, phonetic sound or meaning)
• Bona fide acquisition and use of rights by the objector • Recognition in the relevant sector of the public of the sign as a mark of the
objector, applicant or a third party• Applicant’s intent in applying for the gTLD (including knowledge of the objector‘s
mark, prior application or operation of TLDs identical or confusingly similar to others’ marks)
• Usage of the sign that did not infringe the objector‘s mark rights • Applicant being commonly known by the sign• Creation of a likelihood of confusion as to the source, sponsorship, affiliation or
endorsement of the gTLD
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IV.Comments Period
• No formal objection • Anyone may submit comments• Comment period opens when applications are made
public on the ICANN‘s website. • Comments received within 60 days will be taken into
consideration by the Evaluation Panels performing the Initial Evaluation reviews.
• Comments received later: available for other considerations (eg in the dispute resolution process)
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Thank You
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Dr. Egon Engin-DenizPartnerHead of IPCMS, Vienna
T +43 1 40443 1550M +43 664 60443 1500E [email protected] W www.cms-rrh.com
Overview of Rights Protection MechanismsDr. Luca BarberoStudio Barbero, ItalyMember Marques CyberSpace Team
AGENDA
• HOW THE NEW gTLD WILL AFFECT TRADEMARK HOLDERS …RIGHTS PROTECTION MECHANISMS
• START-UP RIGHTS PROTECTION MEASURES SUPPORTED BY TRADEMARK CLEARINGHOUSE• A) Sunrise period • B) Trademark Claims Service
• POST-LAUNCH RIGHTS PROTECTION MEASURES• A) Uniform Rapid Suspension Procedure (URS)• B) Trademark Post-Delegation Dispute Resolution Procedure (PDDRP)
HOW THE NEW gTLD WILL AFFECT TRADEMARK HOLDERS
Trademark holders could be affected in two ways by the New gTLDs program
The brand could be registered as a New gTLD (dotBRAND);
The brand could be registered as a second level domain name in an approved New gTLD (BRAND.NewgTLD).
RIGHTS PROTECTION MECHANISMS
• The applicant guidebook sets forth rights protection mechanisms (“RPMs”) to manage these risks: every new Registry of a new gTLD will be required to grant a minimum standard of protection.
• In addition to the compulsory RPMs foreseen in the applicant guidebook, Registries will be allowed to develop and implement additional mechanisms that discourage or prevent registration of domain names that violate or abuse another party’s rights.
Start Up Rights Protection
• During the start-up phases for registration in the New gTLD, every Registry of a New gTLD shall provide two services:
- the Sunrise period, and - the Trademark Claims.
• Both the services will be supported by the established Trademark Clearinghouse.
TRADEMARK CLEARINGHOUSE• The Trademark Clearinghouse will be “a central
repository for information to be authenticated, stored, and disseminated, pertaining to the rights of trademark holders”.
• ICANN will contract with the service providers, whose selection will be subject to predetermined criteria.
• The selected service providers will manage the trademark clearinghouse, i.e. a centralized database. The information contained in the Clearinghouse database will not be publicly accessible.
Financial Aspects
• Clearinghouse: separate and independent and from ICANN. • It will be financed by the fees paid by service users:- Trademark holders will pay to register their brand in the
Clearinghouse; - Registries will pay for Trademark Claims and Sunrise
services; - Registrars and others who avail themselves of
Clearinghouse services will pay the Clearinghouse directly.
Functions of the Clearinghouse
• It will authenticate and validate the trademarksregistered in the Clearinghouse; and
• It will serve as a database to provide information to the new gTLD Registries to support the pre-launch rights protection measures:• A) Sunrise and• B) Trademark Claims Services.
• The Sunrise Period must be offered for a minimum of 30 day during the pre-launch phase
• All new TLD Registries will be required to provide brand owners the option to register their marks as domain names before a New gTLD goes live.
• A notice must be provided to all trademark holders in the Clearinghouse if someone seeks a sunrise registration for a second-level domain name identical to the brand.
Sunrise Period
Which Trademarks for Sunrise?
• Registries must recognize and honor all word marks:
• i) nationally or regionally registered and for which proof of use – which can be a declaration and a single specimen of current use – was submitted to, and validated by, the Trademark Clearinghouse; or
• ii) that have been court-validated; or • iii) that are specifically protected by a statute or treaty
currently in effect and that was in effect on or before 26 June 2008.
Sunrise Dispute Resolution Policy (SDRP) 1
• The proposed SRDP must allow challenges based on at least the following four grounds:
• (i) at the time the challenged domain name was registered, the registrant did not hold a trademark registration of national or regional effect or the trademark had not been court-validated or protected by statute or treaty; or
• (ii) the domain name is not identical to the mark on which the registrant based its Sunrise registration; or
Sunrise Dispute Resolution Policy (SDRP) 2
• (iii) the trademark registration on which the registrant based its Sunrise registration is not of national or regional effect or the trademark had not been court-validated or protected by statute or treaty; or
• (iv) the trademark registration on which the domain name registrant based its Sunrise registration did not issue on or before the effective date of the Registry Agreement and was not applied for on or before ICANN announced the applications received.
B) Trademark Claims Service• The Trademark Claims service will be provided for a
minimum of the first 60 days after the opening of general registration and it may also be offered after the start-up phases.
• Registries will provide: • i) notice to potential registrants of a second level domain name
identical to a brand of the existing trademark rights and of thelikely violation of IP rights;
• ii) notice to rights holders of relevant names registered by third parties (notwithstanding the above notice).
Which Trademarks for Trademark Claims Service ?
• Registries must recognize and honor all word marks that have been or are (…broader than in Sunrise services):
• (i) nationally or regionally registered; (ii) court-validated; or (iii) specifically protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.
• It should be noted that no demonstration of use is required.• In order to allow Registries to offer the service, the
Clearinghouse Database will be structured to report them when registrants are attempting to register a domain name identical with the brand in the Clearinghouse.
Post-Launch Rights Protection
• The applicant guidebook sets forth various Trademark Right Dispute Resolution Procedures to allow trademark holders to challenge the infringement of their intellectual property rights after the Registries go live:A) Uniform Rapid Suspension Procedure (URS)B) Trademark Post-Delegation Dispute Resolution Procedure(PDDRP)
• Registry operators may introduce additional rights protection measures relevant to the particular gTLD.
A) Uniform Rapid Suspension Procedure (URS)
• The URS will be an expedited complaint procedure, with requirements similar to the UDRP, but aimed only at the suspension of the disputed domain name.
• Fees: non-refundable fee (likely 300 Euro) to be borne by the Complainant,plus an additional response fee for Complaint challenging 26 or more domain names, which will be refundable to the prevailing party (limited “loser pays” model).
• It will be available a procedure to challenge the abuse of the URS. In the event of a decision against the trademark holder, there will be a penalty and a possible bar from utilizing the URS, temporarily (for one year in the event of two abusive Complaints or one “deliberate material falsehood”) or permanently (two findings of “deliberate material falsehood”).
Grounds of the URS Complaint• The registered domain name is identical or confusingly similar to a word
mark for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed; and
• That the Registrant has no legitimate right or interest to the domain name; and
• that the domain was registered and is being used in bad faith (as in the UDRP there is a nonexclusive list of four circumstances)
Administrative review, notice & locking of domain name
• Administrative review by the URS Provider within 2 days. Inadequacies of complaint cannot be corrected but do not preclude filing of new complaint;
• Notice of complaint via mail to the Registry upon completion of the review;• Lock of the domain by the Registry within 24 hours; all changes to the
registration data, including transfer & deletion of the domains, forbidden;• Notice of lock by the Registry operator to the URS Provider immediately
upon locking the domain name;• Notice of Complaint by the URS Provider to the Registrant within the
following 24 hours. Language: English and the language used in the registrant’s country;
• Notice by the URS Provider to the Registrar of record for the disputed domain name electronically.
Response• Within 14 days (plus a 7 day potential extension), the Registrant
can submit a Response electronically. • Upon receipt, the Response will be forwarded to the Complainant
by the URS Provider • The Response shall contain i.a.:
• Confirmation of Registrant data;• Specific admission or denial of each of the grounds upon which the
Complaint is based;• Any defense which contradicts the Complainant’s claims;• A statement that the contents are true and accurate.
• Administrative review of the Response by the URS Provider within 24 hours.
Default by the Respondent• The Complaint proceeds to Default if the Registrant fails to respond
within 14 days.
• Notice of Default by the URS provider to the Complainant and to the Registrant.
• No changes by the Registrant to the web site and to the Whois information during the Default period will be permitted.
• Review of determination in default cases: if the Examiner rules in favor of Complainant, Registrant will be permitted to file a Response at any time up to six months after the date of the Notice of Default, requesting a de novo review. Prior to the expiration of the six month-deadline, and extension for an additional 6 months may be granted.
Determination• The determination shall be rendered by the Examiner on an expedited
basis with the explicit goal that it be rendered within 3 business days from when Examination began. Absent extraordinary circumstances,however, Determinations must be issued no later than five (5) days after the Response is filed.
• The only remedy available in the URS will be the suspension of the domain name:
• Upon receipt of the determination, the Registry operator shall suspend the domain name, which shall remain suspended for the balance of the registration period (plus one optional additional year at commercial rates).
• The Whois for the domain name shall continue to display all of the information of the original Registrant. The web site will be redirected to an informational web page about the URS.
Appeal• Either party has the right to seek an appeal of the Determination.
• The appeal must identify the specific grounds on which it is based, including why the appellant claims the Examiner’s Determination was incorrect;
• Fee: a standard fee for the appeal to be borne by the appellant, plus an additional fee if new evidence are introduced.
• Deadline: the appeal must be filed within 14 days after a Determination is issued and any Response must be filed 14 days after an appeal is filed. In case of a de novo review of a determination issued in default of Response, the appeal must be filed within 14 days from the second Determination and any Response must be filed 14 days after the appeal is filed.
B) Post-Delegation Dispute Resolution Procedure (PDDRP)
• This Trademark PDDRP will allow brand owners to report the infringement of their trademarks by a Registry:• Top level domain: the Registry has registered a confusingly similar
TLD and engages in abusive conduct;
• Second level domain: the Registry consistently and on purpose permits third parties to register infringing second-level domain names.
• Fees: non-refundable filing fee to be borne by the Complainant, additional administrative fees that will be paid in advance by the Complainant, but will be borne by the non prevailing party.
• Language: English
Infringement at top level domain • The complainant is required to prove, by clear and convincing
evidence, that the registry operator’s affirmative conduct in its operation or use of its gTLD string that is identical or confusingly similar to the complainant’s mark, causes or materially contributes to the gTLD doing one of the following:• a) taking unfair advantage of the distinctive character or the
reputation of the complainant's mark; or • b) impairing the distinctive character or the reputation of the
complainant's mark; or• c) creating a likelihood of confusion with the complainant's mark.
• Example: The Registry of a TLD string identical to a trademark holds itself out as the beneficiary of the trademark.
Infringement at 2nd level• The complainant is required to demonstrate, by clear and convincing evidence,
that through the Registry operator’s affirmative conduct:• a) there is a substantial pattern or practice of specific bad faith intent by the
registry operator to profit from the sale of trademark infringing domain names; and
• b) the registry operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD that are identical or confusingly similar to the complainant’s mark, which:
• i) takes unfair advantage of the distinctive character or the reputation of the complainant's mark; or
• ii) impairs the distinctive character or the reputation of the complainant's mark, or• iii) creates a likelihood of confusion with the complainant's mark.
• Example: The Registry has a pattern or practice of acting as the registrant orbeneficial user of infringing registrations in order to monetize and profit in bad faith.
Remedies against the Registry• Variety of graduated enforcement tools:• Remedial measures for the registry to employ to ensure
against allowing future infringing registrations;• Suspension of accepting new domain name registrations in
the gTLD for a period of time. Deletion, transfer or suspension of existing domain names are excluded since registrants are not party of the action.
• In extraordinary circumstances where the registry operator acted with malice, providing for the termination of a Registry Agreement.
Remedies against the Complainant
• If the Complaint has been filed without merit, the Expert panel can award appropriate sanctions on a graduated scale, including:
• Temporary bans from filing Complaints;• Imposition of costs of Registry operator, including
reasonable attorney fees; and• Permanent bans from filing Complaints after being banned
temporarily.
Determination and AppealDETERMINATION• May be issued by a single panelist or by a three-member Expert Panel,
depending on the choice of the parties, and the determination will be publicly available and searchable on the Provider’s web site.
• Deadline: within 45 days from the appointment of the Expert Panel, or a maximum of 60 days.
• Written Determination stating whether the Complaint is factually grounded and the reasons for the determination.
APPEAL• Deadline: the appeal must be filed within 20 days after the Expert
Determination is issued and it will be possible to file a response in the following 20 days.
Thank You
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Dr. Luca BarberoStudio Barbero
Via Tripoli, 104/106 ‐ 10137 Torino, ITALYTel. +39 349 8847 686Tel. +39 011 3810600Fax. +39 011 3810601http://[email protected]
Part Four: New gTLDs:Long-term protection at the second level
Andrew DenholmLegal CounselIT, Contracting & Shared Services LegalMember Marques CyberSpace Team
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Who is Planning to Apply?Regional
.africa (two initiatives)
.bayern (Bayern/Bavaria)
.bzh (Brittany)
.lli (Leon).
Charitable
• fam
IDNs
19 countries (11 languages)
Industry
.health
.movie
.music
.sport
.web
.food
.bank
City
.nyc
.sfo
.paris
london
Brand
.canon
.hitachi
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Nightmares? Positive innovation?
.hotel
.canon
.car
.finance .wealth.bank
.schweiz .suisse .switzerland
.books
General-Generic
Specific – Companies/Geographic
.ibm
.software
.zurich
.nyc
.london.hitachi
.fonds
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Defensive registration @ 2nd Level On-line Brand protection will become more complex and costly
Likely that .com will continue to dominate in the short term
In the long-term, much will depend on business / consumer acceptance of gTLDs
Some or many gTLDs may be unsuccessful – eg .info, .tel, etc never really took off
Do you wait and see or defensively register now?If you register five domains defensively in 500 gTLDs at a cost of $100 per domain per year, you will need to budget around $250,000 per year just for new gTLD registrations
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Why have a defensive strategy at all? A strong on-line presence is an essential part of marketing and is a
starting point for many consumer transactions Domain name infringements can have a direct financial impact
- fraud can cause direct financial loss and/or uncertainty- pay for click and cybersquatting sites divert clients and potential clients to
competitors Defensively registering domains can
- grow revenue by re-directing domains to your main site- provide "freedom of movement" to enter new markets- save money associated with recovering domains from third parties
• Monitoring tools identify infringements early & minimize dilution risks• Enforcement action can be costly and staff need to know which tool to use
– Cease & Desist, UDRP, URS, litigation, anonymous offer to buy etc.
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Risks: Fraud
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Risks: Tmk Infringement/Confusion
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Risks: Copyright Infringement
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Risks: Cybersquatting
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Identifying Infringing Sites: Monitoring Tools
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Identifying Infringing Sites: Staff & Public Information
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Strategy to get ready for second level domains
• Monitor registration of new gTLDs - Trademark Clearinghouse generally not a substitute for independent monitoring of new DN extensions
• Have your domain registration strategy ready in advance
• Register early and defensively based on your strategy
• Monitor third party use of gTLDs
• Research any infringement and take enforcement action including shut down notices to the ISP, C&D letters, anonymous offer to purchase, URS, UDRP, litigation
• Raise employee awareness to ensure staff know how and when your firm applies for and responds to new gTLD domain names and infringements
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Elements of defensive domain name registrations
• The Masterbrand (e.g. "UBS") registered broadly
• Other brands, slogans, joint ventures, senior management etc. registered more selectively depending on the name and the relevant markets - e.g. youandus, ubssecurities, oswaldgruebel
• Some factors to consider when proactively registering domains in gTLDs• what products and services - e.g. ubs.finance , ubs.food , ubs.eco ?• is it a domain where potential clients would expect to find you? ubs.switzerland ,
ubs.eng , ubs.med , ubs.nyc ? ubssecurities.china • cost and ease of registration - cheaper and easy to register domains are more
attractive to fraudsters and pay for click operators• can you re-direct the domain to an appropriate page on your main site? If not,
there is a good chance you don't need the domain • as a general rule don't register typos
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Issues to consider when creating the strategy
Legal: - an enhanced risk of confusion online- more fraud (e.g. Phishing) and cybersquatting
Financial: - cost of monitoring third party use- cost of enforcement (e.g. UDRP, URS or litigation)- cost of defensive registrations
Reputation: - brand dilution if third parties use your name rights
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Domain Name Maintenance• Central administration – "know what you own"
• Ensure that domains do not accidently expire
• Delete domains that are no longer required / part of your strategy based on:
• traffic to domain• business / marketing needs• defensive benefits – including risk of third party infringement
• Regularly review your strategy and domain name portfolio based on any changes in the gTLD landscape
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Register your rights early!
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Thank you
Andrew DenholmDirector
Legal Counsel,IT, Contracting & Shared Services LegalUBS AGTel: +41-44-238 51 [email protected]
www.ubs.com
Questions?Nick Wood [email protected]
Egon Engin-Deniz [email protected]
Luca Barbero [email protected]
Andrew Denholm [email protected]