IP: Protecting your brand in the Internet of the future

Pre- and post-delegation rights protection mechanisms for gTLDs

As the Internet Corporation for Assigned Names and Numbers (ICANN) gears up to begin delegating up to 1,000 new generic top-level domains (gTLDs) in little more than six months, brand owners are strategizing how to protect their brands in the journey toward the “Internet of the Future,” or at least they should be. While the applicant guidebook provides for some rights protection mechanisms (RPMs), some companies are concerned that that these RPMs are inadequate and are pressing for greater protections. Whether ICANN agrees to supplement or change the existing routes available for brand protection, brand owners should be aware of and may need to implement brand protection strategies in either the pre-delegation and post-delegation phases (or both) in order to adequately safeguard their rights in the new gTLD expansion.

Phase 1: Pre-delegation RPMs

The main avenue for challenging a potentially infringing TLD application in the pre-delegation phase is filing a “legal rights” objection using the formal objections process. When a company files a legal rights objection, an independent panel determines whether the applied-for use of the new gTLD:  

Phase II: Post-delegation RPMs

Once an application completes the delegation process, brand owners may challenge a potentially infringing use by sublevel domain registrants through the Trademark Clearinghouse (TMCH), the existing Uniform Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension System (URS). Companies may also challenge potentially abusive behavior by registrars (owners of the new TLDs) through ICANN’s Post-delegation Dispute Resolution System. 

Trademark Clearinghouse

Proposed RPM Alternatives/Enhancements

Following ICANN’s Toronto meeting in October, the Intellectual Property and Business Constituencies (BC) outlined proposed revisions to the RPMs, including extending the sunrise launch period to 60 days and the claims notice period indefinitely, validating email and/or phone information for registrants and expanding the Trademark Claims service to cover strings previously found to be abusively registered or used.

The New gTLD Applicant Group, the Registrar Stakeholder Group(RSG) and the Non-Commercial Stakeholders Group (NCSG) oppose these proposed revisions. Matt Serlin, Chair of the RSG, noted in a letter to ICANN that changes this “late in the game” would disrupt the product and business plans of registrars and registry operators created based on RPMs in the Guidebook. NCSG also raised concerns that the IP and BC proposals represented a “back door” effort to change policy, rather than implementation, without the consensus of the impacted community.

Contributing Author

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Daniel Frohling

Daniel D. Frohling is a partner in the Chicago office of Loeb & Loeb LLP, where he leads the firm’s gTLD Development and...

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Contributing Author

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Jessica Lee

Jessica B. Lee is an associate in Loeb & Loeb’s New York office, where she litigates and counsels clients in the areas of...

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