ICANN: improving trademark protection mechanisms in light of new gTLDs


3An ICANN working group has been given the task of analyzing the trademark protection mechanisms in light of its new gTLDs program. The group will need to improve these mechanisms in order to provide better protection for trademark holders.

A need for change

Needless to say, ICANN has already published requirements on trademark rights protection mechanisms.

This time however, a review of all mechanisms seems inevitable given they were created at the time of the previous round of the gTLDs and are therefore, tested since only a few yers.

The URS procedure (Uniform Rapid Suspension),  which aims to protect registered trademarks, has also been criticized. The procedure provides trademark holders with a quicker and less expensive protection system but has proven in practice, to be somewhat unsuccessful in protecting trademark holders. Through URS, trademark holders can forbid the unlawful use of a domain name usurping their brand. However, they have no control on a potential transfer of the litigious domain name..

Different rights protection mechanisms

The working group, which consists of approximately two hundred people, will review the different mechanisms, including the URS system.

The group will also review the Trademark Clearinghouse system. Opened on March 26, 2013, this particular mechanism allows trademark holders to input data related to their trademark into a global database, both before and during the launch of new gTLDs. It then notifies trademark holders as soon as an identical domain name carrying a new extension is registered by a third party.

Furthermore, the working group will take into consideration the (Uniform Dispute Resolution Policy), which deals with disputes relating to domain names. UDRP provides an alternative dispute resolution procedure for trademark holders when a domain name uses their trademark. The issue here is about finding user-friendly procedures for trademark holders.