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Before The Storm – The Three Legal Tools To Fight Domain Pirates

2013-10-18

A storm is coming in the domain name world

“Life isn't about waiting for the storm to pass...It's about learning to dance in the rain.” - Vivian Greene

Over the next two years more than 700 top level domains will be launched. Quite hefty when you consider that it took 20 years to launch the first 350. As a brand owner you have to ask yourself what your legal rights are to prevent others from abusing your brand name. Can anyone just register cocacola.news and get away it, or do you as a brand owner have anything to say? With the launch of these new top level domains there has been a lot of focus on brand infringement and how to deal with it. This means that we actually have some legal tools now, which haven't been in place earlier. In the following I will go through these three tools you have at your disposal to protect your brand rights: Submit your trademark information to the Trademark Clearinghouse This is fundamental in a brand protection aspect that you do this right now. The Trademark Clearinghouse is a centralized database which holds your trademark data. This means that you can apply in the initial Sunrise period (a special rights period which normally lasts 30-60 days) of every new top level domain launch and thereby secure your rights before the general market is open Secondly, you can protect not only your direct trademark, but also variations thereof. Collect a list of variations which historically have been infringed. These variations will be added as labels. The first 90 days after the launch of a new top level domain, any party which tries to register domain names matching your trademark or labels will be informed about a possible infringement. If they proceed with the registration, then you will be notified immediately. With this notification in hand you can initiate a URS to block this domain name. To list your trademark in the Trademark Clearinghouse will cost you USD 150 per year if you do it directly. Or you can let us handle the paperwork and the price will be EUR 250. Included in the fee is annual renewal reminders and other advantages. File a claim in the Uniform Rapid Suspension System (URS) Until now when filing a claim you needed to do a Uniform Domain Name Dispute Resolution Procedure (UDRP), which was a long and costly process (Min USD 1.500 and case lasting 1-2 months). With the URS we have a speedy system, which is less expensive and can block domain names after the opponent has had 14 days to respond. You can file several domain names in the same claim. It will cost you USD 375 to claim up to 15 domain names from your opponent. Initiate the Trademark Post-Delegation Dispute Resolution Procedure (PDDRP) While the URS is a claim against the other registrant the Trademark Post-Delegation Dispute Resolution Procedure (PDDRP) has been developed to file a claim directly against a gTLD Registry. The trademark infringed can file a complaint about the conduct, if the Registry "profits from the sale of trademark infringing domain names". You are allowed to write a 5000 words complaint electronically, and all complaints will be verified inside five business days. The fee is still not official, however it is refundable, if the Registry indeed has acted in bad faith. The introduction of the new top level domains will be confusing, but these three tools will at least give you some firepower, if you don't manage to protect your brand in the initial sunrise. Please remember though that "dancing in the rain" is better, than hiding for the storm to pass, so you should proactively make a wish list of domain names to register. The market opens on 29th Oct., where the first nine top level domains hit the market. These are: .CAMERA, .CLOTHING, .EQUIPMENT, .GURU, .HOLDINGS, .LIGHTING, .SINGLES, .VENTURES and .VOYAGE

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