The Intellectual Property Owners Association (IPO) send a letter to ICANN to voice the concerns of brand owners regarding ICANN’s New gTLD Registry Agreement (Registry Agreement) regarding registry reservation of second level domain names.
IPO’s concern is that Registry Operators may reserve the marks of protected brands to leverage premium sales. Further, Registry Operators may use this ability to release names to market competitors of the brand owners.
IPO made a stunning suggestion. They said that should a Registry Operator proceed to reserve, self-allocate or release a domain name identical or confusingly similar to a brand owner’s mark, a dispute resolution procedure should be available to the mark owner. This procedure should be similar to the Uniform Domain-Name Dispute Resolution Policy (UDRP) and utilize the same three-pronged analysis.
However, the UDRP test might be modified for name reservation disputes in two respects: First, if a Registry Operator’s top level domain is reasonably related to the dictionary meaning of the second level name that the Registry Operator seeks to reserve, self-allocate or release, relief to complainant may be denied. This showing of relatedness would satisfy Respondent’s burden with respect to the “Rights and Legitimate Interests” prong of the three-part UDRP analysis. Second, the sole remedy for this proceeding should be the removal of the domain name at issue from reserved status. We would be happy to work with ICANN to create the details of such a proposed notification and dispute resolution policy.
This means that the proposed dispute resolution procedure will grant “Rights and Legitimate Interests” to the Respondent without the Respondent having to prove any of the following circumstances that are currently described in the UDRP (Uniform Domain Name Dispute Resolution Policy):
- (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
- (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Do you own apple.com or apple.info? You are automatically granted Rights and Legitimate Interests and the complaint is denied.
Do you own apple.computers or apple.phone? You are NOT automatically granted Rights and Legitimate Interests and the panelist continues to the other 2 elements.
As simple as that.
If the owner has Rights and Legitimate Interests and also infringes on a trademark then this case belongs to a court. NOT the UDRP or any other dispute resolution procedure.
Of course the Intellectual Property Owners Association’s proposal was not directly for the UDRP but it can easily be applied to it. A few people have expressed similar ideas in the past but to hear this from the Intellectual Property Owners Association is simply incredible.