Additional Rights Protection Mechanisms

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Recommendation: Support
Support.png
Summary: rights protections that go beyond ICANN requirements
Outcome: protection against trademark abuses
Addressed by ICANN Policy: N
Addressed by Legislation: N
Related to: Cybersquatting, Typosquatting, UDRP, URS

The term Additional Rights Protection Mechanisms (RPMs) encompasses rights protection policies that go beyond the scope of what ICANN mandates. ICANN policy does address forms of rights protection, particularly in reference to trademark and intellectual property;[1] additional RPMs build off of and supplement ICANN's current policies.

Example RPMs

  • Domains Protection Marks List (DPML): creating a DPML policy is a relatively new procedure initiated by Donuts Inc., a TLD registry, in conjunction with its registrars, for the new gTLD program.[2] This policy will allow trademark holders, as confirmed by the Trademark Clearinghouse Database, to block registrations for strings consisting of or containing their brand name or trademark across all Donuts owned gTLDs.[2] Through this policy, trademark holders can avoid having to defensively register their strings in each individual TLD.[2] It is important to note that blocked strings will not be functional according to Donuts Inc.'s DPML policy.[3] In February 2014, Rightside Registry announced that it will also be implementing a DPML policy across all its current and future gTLDs.[4]
  • Perpetual Block: a perpetual block is an RPM that allows a registered trademark holder to block any attempts to register a trademarked domain within a particular TLD by making a one time payment.[5] This practice is useful in preventing cybersquatting and trademark infringement.[6] A memorable example of a perpetual blocking option occurred in ICM Registry's .xxx domain space.
  • "Spanning the Dot" Policy: this Uniregistry policy allows participants from their Sunrise A period to participate in an additional Sunrise B period where the trademark holder will be able to register "the qualified Sunrise A second-level string" that ends in the TLD or a plural or conjugated form of the TLD.[7] It is interesting to note that while strings acquired in Sunrise A can be blocked, those acquired in Sunrise B cannot.[8]

Public Perception

Trademark protection organizations and the Coalition Against Domain Name Abuse (CADNA) are incredibly supportive of additional RPMs such as perpetual blocks and DPMLs, and even "urged" ICANN to require additional RPMs in its new gTLD program.[5] On an individual basis, many view perpetual blocks as a positive and more cost-friendly way of handling defensive registrations.[5][9] Some are excited by Donuts Inc.'s DPML policy, seeing it as potentially money saving for businesses and an easy way to prevent cybersquatting.[10]Others, however, are skeptical about the motive behind Donuts Inc.'s policy and the execution of clauses like the DPML Override clause, which may create confusion regarding overlapping trademarks.[11]

Outcome

Additional RPMs may increase good will in that they appear to help trademark owners avoid cybersquatting and other registration abuses at a more cost-effective rate.

Historical Use

  • DPML Policy: as stated above, this policy is new and relates to the new gTLD program. It is intended to help prevent cybersquatting and typosquatting within gTLDs controlled by Donuts Inc or Rightside.[12][4] In order to qualify for Donuts Inc.'s DPML, a trademark holder must submit an SMD entry given by the Trademark Clearinghouse to a Donuts Inc. registrar.[12] Initial blocks for Donuts last from 5 to 10 years and "may be renewed in annual increments from one (1) to ten (10) years."[2] There are some notable exceptions in this program such as premium names, reserved names, or names registered before the DPML block was in place.[2] Additionally, the program may be more expensive, at around $3000 for the first 5 years, than some businesses can afford, and cost/benefit analyses should be conducted on an individual basis to see if this is a program that fits company needs.[3] For Rightside's DPML program, registration will initially only cover 1 year; however, in the future Rightside will allow participation in its DPML for longer periods.[4] Through Rightside, a trademark owner can register its mark.tld, its mark plus another word .tld, or "a variation of the trademark" .tld.[4]
  • Perpetual Block: this policy was piloted by the 2011 launch of ICM Registry's .xxx. ICM Registry's launch plan included a Sunrise B period where trademark owners not involved in the adult entertainment industry could defensively reserve domain names identical to their trademarks.[13][6] During .xxx's Sunrise Period, it received "more than 80,000 applications for domain names."[14] In the context of the new gTLD program, ICM has applied for .porn, .adult, and .sex. If it succeeds in becoming the registry for these names, then its "Matching Policy" will allow Sunrise B participants that have blocked trademarked domains in .xxx to expand the block to the new extensions with no additional charge.[15][3] A recent application of this kind of policy is occurring in the new TLD program with Uniregistry, which plans on allowing people "to block trade or service marks...strictly on a cost-recovery basis" where a TMCH "Sunrise application can be designated to cover all future TLDs which Uniregistry is entrusted to manage."[16][3]
  • Uniregistry's "Spanning the Dot" Policy: this program is intended to assist trademark owners protect their names if their trademark would span the dot and include the new TLDs.[8] In this way, it can help guard against abusive registrations; it is important to note that in order to qualify for Sunrise B, the trademark holder needs to participate in Sunrise A.[7]

ICANN Policy

Legislation

There is no legislation that directly addresses additional RPMs. However, what RPMs seek to defend against, cybersquatting and trademark abuses, are addressed in the Anti-Cybersquatting Consumer Protection Act (ACPA).

DNS Award

Awardees make it a top priority to protect the rights and intellectual property of others. Some of the RPMs listed above have not been thoroughly tested; if they are found to be abusive or extremely inefficient, they will be removed.

Additional Resources

Related Articles

References

  1. 1.0 1.1 http://www.wipo.int/amc/en/domains/rpm/ World Intellectual Property Organization (WIPO)
  2. 2.0 2.1 2.2 2.3 2.4 http://www.donuts.co/dpml/dpml-overview/ Donuts, Inc.
  3. 3.0 3.1 3.2 3.3 http://www.comlaude.com/wp-content/uploads/2013/10/Donuts-DPML-Factsheet.pdf (PDF) (October 2013) Com Laude
  4. 4.0 4.1 4.2 4.3 http://rightside.co/rightside/rightside-registry-announces-new-dpml-product/ by Jeff Eckhaus (February 06, 2014), Rightside
  5. 5.0 5.1 5.2 http://cadna.org/press-releases/2012/9/11/cadna-supports-increased-rights-protection-mechanisms-for-icanns-new-gtld-program (September 11, 2012), Coalition Against Domain Name Abuse
  6. 6.0 6.1 http://www.lexology.com/library/detail.aspx?g=34b4e552-ca5e-4a4e-b705-177c7ecb727a by Briggs and Morgan (Septemeber 27, 2011), Lexology
  7. 7.0 7.1 http://www.icann.org/sites/default/files/tlds/tattoo/tattoo-launch-policy-09dec13-en.pdf (PDF) Uniregistry
  8. 8.0 8.1 http://domainincite.com/15422-uniregistry-plans-dot-spanning-sunrise-periods-and-anti-gaming-protection by Kevin Murphy (December 27, 2013), DomainIncite
  9. http://adage.com/article/digitalnext/protect-brand-coming-xxx-porn-domain/227715/ by Steve A. Abreu (May 23, 2011), Advertising Age
  10. http://gtldstrategy.com/2012/09/12/dollars-and-sense/#more-695 (September 12, 2012), Fairwinds Partners
  11. http://theartofthename.com/so-you-can-block-your-tm-under-a-dpml-but-someone-else-may-knock-your-shuffleboard-puck-off-the-deck/ by Adam Dicker
  12. 12.0 12.1 http://www.donuts.co/dpml/faq/ Donuts, Inc.
  13. http://www.icmregistry.com/about/policies/abcd/ ICM Registry
  14. http://finance.yahoo.com/news/ICM-Registry-Closes-Sunrise-iw-750355378.html ICM Registry (November 1, 2011), Yahoo Finance
  15. http://www.icmregistry.com/about/policies/domain-matching-program/ ICM Registry
  16. http://domainnamewire.com/2012/06/13/uniregistry-to-offer-single-trademark-block-across-all-its-top-level-domains/ Frank Schilling as cited by Kevin Murphy (June 13, 2012), DomainIncite
  17. http://newgtlds.icann.org/en/announcements-and-media/announcement-30sep13-en (PDF) titled "View the Final RPM Requirements" Internet Corporation for Assigned Names and Numbers (ICANN)
  18. http://domains.adrforum.com/main.aspx?itemID=1929&hideBar=False&navID=524 National Arbitration Forum (NAF)