New gTLDs and Domain Name Disputes – A snapshot

As the internet space is expanding with an influx of new TLDs, over 4 million new domain names have been registered on these nTLDs. Obviously, clashes over domain names become inevitable and copyright issues follow soon. This may also give way to illegitimate businesses, cyber crimes and other unlawful activities. Understandably, brand protection agencies are having a tough time, although some measures instituted by ICANN have made their lives easier! Let us take a look at how well these processes have worked in almost a year since new gTLDs started entering the market. But first, let me list down some of the basic terms.

Domain Squatting – the challenge every TLD launch faces

Domain squatting, much like its real estate counterpart is when a domain name is registered by an individual or company with the sole intention of selling it later at a profit to someone for whom it will be of value. The registrant usually resorts to domain parking or misleading advertisements on these websites in order to make revenue out of the organic type-in traffic it may get. In several cases, these domain names could also be typos of brand names that will aim to leverage on the similarity between the correctly spelt word/path and an incorrect spelling.

What can you do about Domain Squatting?

The legality v/s ethicality debate of the concept continues as it ties up millions of potentially legitimate domain names, but ICANN and the Governments of many nations have no doubts on where they stand.

Some countries have come up with clear policies on this practice. For instance, Individuals/companies in Australia are required / mandated to have a connection with the domain name they intend to register on the ccTLD. China and Russia scrutinize a squatter if bad faith intent is exhibited, implying that domain names bearing a resemblance to a trademarked name are not technically disallowed, but could fall foul in the event of a complaint. UAE’s idea of settling a domain name dispute is appointing a panelist from a third country when the clashing parties are from two different countries.

To combat domain squatting, one may seek help from a domain authority of a particular country. In the wake of domain name disputes, UDRP (Uniform Domain Name Dispute Resolution Policy) and TMCH (TradeMarkClearingHouse), both established by ICANN, come to many a netizen’s rescue.

UDRP

UDRP resolves disputes pertaining to domain name registration. After rampant use of trademarks as domain names without the trademark owner’s consent, a need for such a procedure was identified and UDRP was created in 1999. Since its inception, about 40,000 cases have been registered under UDRP.

A complainant in a UDRP proceeding must ensure 3 elements:

  1. The domain name is identical or similar to the disputed one
  2. The registrant doesn’t have any rights or legitimate interests in the domain name
  3. The domain name has been registered and is being used in bad faith

A verdict is pronounced after a formal proceeding, taking all facts of the case into account.

TMCH

TMCH is a database of trademarks and is aimed at enhancing the protection of intellectual property on the internet. It’s basically the central repository for information related to rights of trademark owners.

The year that was from a domain name disputes perspective:

Numerous cases have been filed under the two provisions and several disputes have come up as expected. Domainers have been the first off the blocks in getting the generics and hoping to make a profit, but there has been no dearth of mischief mongers who have attempted to extort brands by blocking their names on the myriad options that new gTLDs threw up. Here We’ve listed a few (in)famous ones here:

  • Disputed Domain Name: CANYON.BIKE
    How it panned out – In what was one of the most popular cases pertaining to new gTLDs, CANYON.BIKE was recovered by the bike-maker, Canyon Bicycles. Seven seconds after it became publicly available, CANYON.BIKE was squatted away. The defendant (accused of domain squatting) justified the act by claiming that this was done to enlarge the network and ‘get in friendly contact with Canyon’. A panelist rejected the defendant’s arguments, citing deliberate and intentional commercial purpose. Hence, the verdict was pronounced in favour of the complainant. This was the first dispute to be resolved under UDRP.
  • Disputed Domain Name: SPEEDTEST.ORG
    How it panned out – Although this was not a new gTLD, this proved a benchmark verdict since it was a unique case of reverse hijacking! In this case, a false representation by the complainant to the rights to ‘SpeedTest.org’ along with further elaborate investigations revealed that the complaint was mala fide and intended to hijack the domain name in question. It was found that the respondent registered the disputed domain name 6 years before the complainant used it for the first time. This was a Reverse Hijacking UDRP instance.
  • Having filed and won 10 UDRP cases on domain names with the term ‘tractor supply’, Tractor Supply Company of Texas now wants the virtual ownership of the work ‘Traveller’ as well and so, had filed a UDRP for it! It’s a mystery if they own it!

How Registries have adapted to Domain Protection Concerns

More savvy companies are now offering protection to specific domain phrases. Through Domains Protected Marks List (DPML), Donuts Inc. enables brand owners to block the chosen domain phrases from usage by third parties.

For example, if X owns the rights for ‘trade’, it can purchase a DPML block to cover the term ‘traders’ as it contains the trademarked term ‘trade’. This does not mean that X owns ‘traders’ as DPML restricts the registrant to only block the domain phrase.

The ‘Sunrise phase’ for new gTLDs was introduced to discourage a registrant from registering domain names with malicious intent or in bad faith. Coupled with TMCH, this has seen some success as far as domain squatting goes.

DPML not only protects holders against cyber squatting, but also allows possible future use of the term to the holder. DPML applications can only be submitted through a registrar authorized by Donuts to sell DPML blocks.

In the virtual world, everyone’s eyeing the best address. It’s imperative that one safeguards one’s registered domain name and we can’t emphasize enough on the need to take steps that protect your domain names. Is your domain name safe? Do you think UDRP and TMCH have been successful in their mandate? Let us know by commenting below.

About Arshia

ArshiaAn avid traveller and a shameless foodie, Arshia also works as a marketing specialist and enjoys reading

Arshia

Arshia

An avid traveller and a shameless foodie, Arshia also works as a marketing specialist and enjoys reading