By Stuart Fuller
The threat of a domain name falling into the wrong hands is all too real today, with cyber squatters profiting from the weaknesses of the resolution process at the expense of intellectual property holders. Most cases of IP infringement occur because of the lack of a robust domain name strategy that either results in brand holders failing to secure the registration of a digital asset aligned with a brand, product or trademark, or an oversight in the renewal process. The new gTLD world has added a complexity of new TLDs being launched weekly, although some Rights Protection Mechanisms such as the Trademark Clearinghouse (TMCH) and the Domains Protected Marks List (DPML).
Using a registrar who offers an auto-renewal function as standard is an important consideration for any organisations, but if the worst still happens, what options due brand holders really have? Any infringing registrations in the new gTLD space can follow the rapid, low-cost Uniform Rapid Suspension (URS) route, but that only suspends a troublesome domain name until expiry, assuming that the high burden of proof that required can be met. The brand holder will still need to try and register it on expiry and subsequent release. The relatively toothless legislation has only been used in around 500 cases since its launch in early 2013. One other reason for this is simply that it only offers protection under new gTLD registrations plus a small number of ccTLDs. With over 110 million dotCom registrations (close to one third of all domain names registered), the vast majority of infringing registrations still occur in the traditional gTLD space.
Uniform Dispute Resolution Policy (UDRP) is a far more robust process to follow for a brand holder who is faced with cyber squatted digital assets. Higher cost, lower burden of proof and guaranteed return of a domain name although it can take some time to have a case heard by a WIPO judge meaning a domain name resolving to infringing material such as counterfeited branded goods has the potential to do significant reputational damage whilst it's still alive and kicking.
However, could one of the new gTLD registries created a product that may significantly reduce the threat of Cybersquatting? Accent Media, the registry behind dotTickets have launched a tool that allows anyone to search for pending domain registrations under the dotTickets TLD. Even now the TLD is in general availability, the tool is providing a valuable tool in the fight against Cybersquatting. The only downside is that domain registrations have to wait for 30 days to go live (or 5 days if there is a valid trademark). But is this an issue for an organisation if they know that their registrations are safe and secure from third party infringers?
During the 30 day "create" period anyone who owns a trademark that appears to be in the process of being registered by a third party can file a challenge (for a fee) against the registration, almost like a mini-UDRP. Unless the potential registrant can provide proof as to why they should be able to register the name, the registration will be deleted. Clean, simple and cost effective.
There's no reason why any registry can't offer the same registration process as well as potentially adapting it for renewals, although Verisign do offer a tool currently that shows names that have expired and are due for re-release onto the open market. However, there's no denying that this is an interesting development and Accent Media's model should perhaps be investigated by other registries who could be putting the interests of brand holders in front of the interests of their profits. The intellectual property world has focused on the practices of those registries who have offered controversial processes on their TLDs - perhaps it's time to focus on what positive models are being put in place by registries such as dotTickets.