29 Rights Protection Mechanisms
|gTLD||Full Legal Name||E-mail suffix||Detail|
|.now||Starbucks (HK) Limited||tld.asia||View|
29 Rights Protection Mechanisms
The Registry is committed to a comprehensive strategy on Rights Protection Mechanisms (RPM). The Registry works closely with DotAsia Organisation (through Namesphere) and draws from the successful experience and knowledge of the RPM measures implemented for the .ASIA, especially in its acclaimed Sunrise process and its contributions to rapid suspension policies.
The Registry does not intend to provide open general registrations. However, if the Registry at any point in time decides to do so, the following describes the comprehensive RPM policies and processes that the Registry along with its registry back-end and front-end service providers will put in place.
29.1 Sunrise and Startup Processes
A comprehensive Sunrise and startup process is the key to successful RPMs. A successful Sunrise program not only provides priority to rights holders, but also sends a clear message to the market that the TLD is serious about RPMs, thereby further deterring abusive registrations.
The Sunrise process provides for the introduction of the TLD in an orderly and equitable manner. Its purpose is to give reasonable protection and priority to stakeholders and certain prior rights holders, as well as to deter abusive and bad faith registrations. The Sunrise policies are also designed to facilitate reliability for ICANN Accredited Registrars and fair competition amongst registrants. It is intended to create a stable and effective launch and registration process for the benefit of various stakeholders and the Internet community at large.
Learning from the successful experience of the .ASIA sunrise, which achieved 0 disputes and also 100% satisfaction (satisfied or very satisfied) in an online poll of Intellectual Property Rights (IPR) practitioners, the Registry will implement a thorough and multi-phased Sunrise and startup process similar to that of the .ASIA registry.
A comprehensive set of Sunrise policies will be put in place in addition to the standard Sunrise and Trademark Claims services as specified in SPECIFICATION 7: MINIMUM REQUIREMENTS FOR RIGHTS PROTECTION MECHANISMS, of the New gTLD Registry Agreement. The Sunrise policies will follow a similar framework of the .ASIA Sunrise Policies (http:⁄⁄dot.asia⁄policies⁄DotAsia-Sunrise-Policies--COMPLETE-2007-08-10.pdf), in so far as it does not conflict with the specification 7.
29.1.1 Standard Sunrise and Trademark Claims Services
As a basic commitment, the Registry will implement the requirements from Specification 7 of the New gTLD Registry Agreement, and in accordance to the relevant Trademark Clearing House (TMCH) Sunrise and Trademark Claims services.
For this standard Sunrise, the Registry will establish, at a minimum, the eligibility requirements verified by Clearinghouse data, and incorporate a Sunrise Dispute Resolution ⁄ Challenge Policy. The standard Sunrise eligibility requirements include: (i) ownership of a mark that satisfies the criteria set forth in section 7.2 of the Trademark Clearing House specifications, (ii) description of international class of goods or services covered by registration; (iii) representation that all provided information is true and correct; and (iv) provision of data sufficient to document rights in the trademark.
The Registry believes that these form only the very basic layer of RPM and will therefore add significant measures on top of the standard process to ensure that prior rights of others are not abused.
In terms of Sunrise, Specification 7 and the TMCH descriptions only provide a basic framework for Trademark holders to protect names that are identical to their trademark. The Registry believes that additional protection is important and can be efficiently and effectively put in place with a multi-phased Sunrise program. Further discussion about this is included in 29.1.4 below.
29.1.2 Auction Process
An important part of the success of the .ASIA Sunrise program is the use of auction in the resolution of contention. It is known that many Trademarks are similar or identical because of the different jurisdictions and different classes. Therefore, it is inevitable that there would be some competition among rights holders to certain names. A complete Sunrise program requires a contention resolution mechanism that works to reduce the tension of competition and resolve the issue in a stable and orderly manner.
When the .ASIA Sunrise Auction process was first introduced, the community was worried about possible high prices in the auctions making it costly for trademark holders. The results of the process demonstrate however the original intent prevailed. If a pure first-come-first-served model is used, the tension at the opening of the registry at the Sunrise period would be extremely high. Also, because of the competition, the so-called FCFS approach essentially becomes a lottery and one that favours registrars with systems in closer proximity to the registry servers. The tension and the inherent unjust of the process caused thousands of disputes and litigation in previous launches of TLDs utilizing such an approach.
In the .ASIA Sunrise process, a total of about 30,000 applications were received. Out of which less than 2% ended up in an auction. Furthermore, only about 40% ended up in a contested auction (i.e. that there was more than 1 bid in the auction). What that means is that, while it demonstrated clearly that there is certainly competition among trademark holders, it only represents a very small portion. Also, when there was more than one verified applicant for a Sunrise domain and an auction is setup, many trademark holders elect not to bid for the name. Based on the understanding from DotAsia, it is found that many trademark holders do know that their mark is “shared” by other companies, perhaps in different jurisdiction or in different categories. Their motivation to participate in the Sunrise is to avoid abuse of their mark by other parties. Because in the Sunrise process, before an auction is held, each of the verified applicants will be given the information of the other verified applicants in the auction ahead of time. They therefore know who else is bidding for the name and can evaluate whether the other party may in fact abuse their mark. Knowing that the other party is another legitimate trademark holder who may not be abusing their mark, many of the trademark holders elected not to bid and let the other party win the auction with a nominal bid at $10.
What this illustrates is that the auction process is a very successful tool in reducing the stress of the people and the systems in the launch of a registry. Overall, the average winning price of the auctions in the .ASIA startup process was less than US$200. That represents a significant cost benefit for rights holders in comparison to possible litigation or alternative dispute resolution proceedings.
29.1.3 Sunrise Challenge (Dispute Resolution) Process
Besides a contention resolution process, an important part of any Sunrise process is a well developed Sunrise Challenge Process to ensure the integrity of the Sunrise program. The Sunrise Challenge Process is important such that after the allocation of a Sunrise name, there is a period of time where legitimate rights owners can challenge the legitimacy and eligibility of a registrant based on the Sunrise policies to a domain name.
Following again the .ASIA experience, a comprehensive Sunrise Challenge (Dispute Resolution) Process will be put in place and a dispute resolution provider will be selected to arbitrate disputes. A sample of the .ASIA Sunrise Challenge Process is included in the Attached. As part of the requirement of Specification 7 of the new gTLD Registry Agreement, An SDRP will be adopted to allow any party to raise a challenge on at least the four grounds identified in the Applicant Guidebook at TMCH s6.2.4. The remedy will be cancellation or deletion of a successfully challenged domain name. All registrants will be required to submit to proceedings under the SDRP, which will specify that SDRP claims may be raised after registration of a sunrise domain and will require that complaints clearly identify the challenger, the challenged domain, and the ground⁄s on which the complaint is based.
29.1.4 Additional Protection Mechanisms for Sunrise
In addition to the basic “identical” match of a Trademark to a domain name applied for during the Sunrise period, the Registry intends to follow the successful example of .ASIA to include additional types of matches, for example:
- Exceptions for registered mark (tm, sm, etc.) type or entity type (ltd, inc, etc.) identifiers
- Exceptions for the TLD string (i.e. allowing marks containing the TLD string to omit that substring)
- Considerations for commonly used short forms and omission of locality indications
- Acceptance of standard Romanization and Transliterations for Company Names
- Extended protection for trademarks + the class of the trademark (e.g. “BRAND Shoes” or “BRAND Computers”, etc.)
These considerations allow trademark holders priority registration opportunity to protect names that are important and related to them.
The Registry will also develop specialized phases targeted to provide priority registration periods for the community that the Registry will be primarily serving. For example, in the .ASIA Sunrise, Asian businesses and registered companies are allowed to participate in one of the phases of the Sunrise program ahead of the general availability of the domain. This allowed many Asian businesses who may not have a registered trademark to make use of the Sunrise process to protect their name.
Besides the multitude of provisions for rights holders to participate in the Sunrise process, another important feature of the success of the .ASIA Sunrise program is the inclusion of a built-in reconsideration process. Because of the many applications a trademark holder may need to be filing, especially considering in the future the many new gTLD launches, it is possible that clerical mistakes and errors could be made in the Sunrise application. The .ASIA Sunrise process included a built-in reconsideration and amendment process that was critical to the overall success of the program. The success rate of the .ASIA Sunrise applications was over 90% as compared to other previous Sunrise launches where the success rate may be closer to 50-60%.
This explains the high approval rating of the .ASIA Sunrise program and also the rationale for the Registry to learn from and follow the good example set by .ASIA in the development of its comprehensive Sunrise policies.
29.1.5 Proactive Outreach and Specialized Programs
Furthermore, on top of the Sunrise program, a Pioneer Domains Program will be put in place to provide even further protection for prior rights holders while maintaining a strong balance against users’ rights.
Two features of the Pioneer programs for rights holders include: 1) the ability to apply for typo or other variant forms of their trademark to improve protection; 2) the use of the Pioneer Domains Challenge process to protect against abuse.
Again, following from the success of the .ASIA startup processes, the Registry intends to put in place a Pioneer Domains Program similar to the .ASIA Pioneer Domains Program (http:⁄⁄pioneer.domains.asia⁄ascii⁄policies.html). Together with the Pioneer Domains Program, a Pioneer Domains Challenge Process will be put in place (http:⁄⁄pioneer.domains.asia⁄ascii⁄challenge.html).
In short, the Pioneer Domains Program invites potential registrants to submit proposals, explaining how they would use and promote the domain name. Each proposal will require an application fee and prior acknowledgment and acceptance of relevant terms and conditions. Evaluation criteria will take into account the applicantʹs business plan, marketing expertise, and the manner and purposes for which the proposed site would be operated. For Trademark applicants, the evaluation criteria is based on the trademarks filed and the rights holder can also apply for variations relevant to their mark.
29.2 UDRP, URS and other Suspension Processes
While the Startup process, including the multi-phased Sunrise program provides a proactive process for prior rights holders to protect their names under the TLD in a priority registration process, RPMs after the allocation and delegation of a second level domain under the TLD is equally important.
29.2.1 UDRP Implementation
The Registry will comply with and put in place mechanisms to ensure the enforcement of UDRP decisions. These include provisions within the Registry-Registrar Agreements (RRA) with Accredited Registrars to ensure that they have adequate provisions in their Registration agreement with registrants to submit to UDRP proceedings, as well as to work closely with Accredited registrars in the implementation of UDRP decisions and required actions through the URS process.
29.2.2 URS Implementation
The Registry will comply with and put in place mechanisms to ensure the enforcement of URS decisions. These include provisions within the Registry-Registrar Agreements (RRA) with Accredited Registrars to ensure that they have adequate provisions in their Registration agreement with registrants to submit to URS proceedings, as well as to work closely with Accredited registrars in the implementation of URS decisions and required actions through the URS process.
The registry operator will implement decisions rendered under the URS on an ongoing basis. Per the URS policy posted on ICANN’s Web site as of this writing, the registry operator will receive notice of URS actions from the ICANN-approved URS providers. These emails will be directed immediately to the registry operator’s support staff, which is on duty 24x7. The support staff will be responsible for creating a ticket for each case, and for executing the directives from the URS provider. All support staff will receive pertinent training.
As per ICANN’s URS guidelines, within 24 hours of receipt of the notice of complaint from the URS provider, the registry operator shall “lock” the domain, meaning the registry shall restrict all changes to the registration data, including transfer and deletion of the domain names, but the name will remain in the TLD DNS zone file and will thus continue to resolve. The support staff will “lock” the domain by associating the following EPP statuses with the domain and relevant contact objects:
• ServerUpdateProhibited, with an EPP reason code of “URS”
• ServerDeleteProhibited, with an EPP reason code of “URS”
• ServerTransferProhibited, with an EPP reason code of “URS”
• The registry operator’s support staff will then notify the URS provider immediately upon locking the domain name, via email.
The registry operator’s support staff will retain all copies of emails from the URS providers, assign them a tracking or ticket number, and will track the status of each opened URS case through to resolution via spreadsheet or database.
The registry operator’s support staff will execute further operations upon notice from the URS providers. The URS provider is required to specify the remedy and required actions of the registry operator, with notification to the registrant, the complainant, and the registrar.
As per the URS guidelines, if the complainant prevails, the “registry operator shall suspend the domain name, which shall remain suspended for the balance of the registration period and would not resolve to the original web site. The nameservers shall be redirected to an informational web page provided by the URS provider about the URS. The WHOIS for the domain name shall continue to display all of the information of the original registrant except for the redirection of the nameservers. In addition, the WHOIS shall reflect that the domain name will not be able to be transferred, deleted or modified for the life of the registration.”
29.2.3 Other Suspension Programs
In addition to the basic dispute and suspension programs, the Abuse Prevention Mechanisms as described in #28 as well as the geographical names reservation processes described in #22, the Registry, following the footsteps of the .ASIA Registry as well, will explore appropriate suspension mechanisms and challenge processes to further improve the protection to prior rights holders.
For example, .ASIA has completed an MoU with the International Federation Against Copyrights Theft Greater China (IFACT-GC), and has explored extensively and works closely with the Anti-Phishing Working Group on possible alternative rapid suspension processes against gross copyright infringement and phishing sites. These discussions also helped inform some of the discussions that lead to the development of the URS.
Given the focus of the TLD, the Registry will also consider and explore adopting other relevant forums for domain dispute resolution. For example, the Registry may explore the adoption of relevant ccTLD dispute resolution processes or any other industry arbitration processes relevant to the use to broaden the protection of the legitimate prior rights of others in the registration of domain names in the TLD. These measures will be put in place in addition to and definitely not in replacement of the basic requirements of submitting to UDRP, URS and other ICANN policies.
29.2.4 Post-Delegation Dispute Resolution Process (PDDRP)
While the Registry is confident that its processes and policies will be effective in curbing abusive registrations, and that it has the knowledge and capabilities to implement and enforce such measures, the Registry is fully prepared to work with ICANN should a PDDRP be initiated.
The Registry fully submits to the process and, along with its Backend Registry Services Provider as well as Front End Registry Services Provider, will comply with all ICANN requirements through a PDDRP.
29.2.5 Rights protection resourcing plans
Since its founding, Afilias is focused on delivering secure, stable and reliable registry services. Several essential management and staff who designed and launched the Afilias registry in 2001 and expanded the number of TLDs supported, all while maintaining strict service levels over the past decade, are still in place today. This experiential continuity will endure for the implementation and on-going maintenance of this TLD. Afilias operates in a matrix structure, which allows its staff to be allocated to various critical functions in both a dedicated and a shared manner. With a team of specialists and generalists, the Afilias project management methodology allows efficient and effective use of our staff in a focused way.
Supporting RPMs requires several departments within the registry operator as well as within Afilias. The implementation of Sunrise and the Trademark Claims service and on-going RPM activities will pull from the 102 Afilias staff members of the engineering, product management, development, security and policy teams at Afilias and the support staff of the registry operator, which is on duty 24x7. Resources will also be assigned by Namesphere (with support from DotAsia) for the registry operator as the front-end services provider, whose responsibilities may require as much as 50% of full-time employment if the domains under management were to exceed several million. No additional hardware or software resources are required to support this as Afilias has fully-operational capabilities to manage abuse today.
29.3 Meeting & Exceeding Requirements
29.3.1 Capabilities and Knowledge
The Registry is supported by Namesphere as the Front-End Services provider, and works closely with DotAsia Organisation (through Namesphere) to develop the Sunrise and Startup processes as well as agreements and other administrative proceedings to ensure effective, efficient and implementable enforcement of such policies and processes.
DotAsia has significant knowledge and expertise in the development and successful implementation of Sunrise and RPM policies, as demonstrated by the successful launch of the .ASIA TLD. A dedicated team comprised of DotAsia, the Registry and our Registry Back-End Services Provider Afilias will be convened to ensure that policy as well as technical capabilities are in place to support the RPMs.
29.3.2 Compliance with Specification 7
The Registry is committed to comply with Specification 7 of the New gTLD Registry Agreement, and plans to implement additional RPM on top of the basic requirements of Specification 7.
29.3.3 Plans for Meeting Compliance with Contractual Requirements
The Registry, along with its Front-End Services Provider and Back-End Services Provider will work to ensure that contractual compliance is met. Besides the basic requirements in Specification 7, the Registry intends to consult with ICANN through the process as additional RPMs are put in place to ensure that they also comply with contractual requirements. With the strong experience from our partners, especially from DotAsia, the Registry can be assured that it will meet and comply with all the ICANN contractual requirements.
The following will be memorialized and be made binding via the Registry-Registrar and Registrar-Registrant Agreements:
The registry may reject a registration request or a reservation request, or may delete, revoke, suspend, cancel, or transfer a registration or reservation under the following criteria:
a. to enforce registry policies and ICANN requirements; each as amended from time to time;
b. that is not accompanied by complete and accurate information as required by ICANN requirements and⁄or registry policies or where required information is not updated and⁄or corrected as required by ICANN requirements and⁄or registry policies;
c. to protect the integrity and stability of the registry, its operations, and the TLD system;
d. to comply with any applicable law, regulation, holding, order, or decision issued by a court, administrative authority, or dispute resolution service provider with jurisdiction over the registry;
e. to establish, assert, or defend the legal rights of the registry or a third party or to avoid any civil or criminal liability on the part of the registry and⁄or its affiliates, subsidiaries, officers, directors, representatives, employees, contractors, and stockholders;
f. to correct mistakes made by the registry or any accredited registrar in connection with a registration; or
g. as otherwise provided in the Registry-Registrar Agreement and⁄or the Registrar-Registrant Agreement.
29.3.4 Consistency with Technical, Operational and Financial Approach
The use of pendingCreate along with other registry system features ensure that Sunrise and other startup processes could be processed in a standards based manner. In addition, DotAsia has helped to work out an open EPP extension for the implementation of Sunrise applications:
These EPP Extensions include:
• An 〈ipr:name〉 element that indicates the name of Registered Mark.
• An 〈ipr:number〉 element that indicates the registration number of the IPR.
• An 〈ipr:ccLocality〉 element that indicates the origin for which the IPR is established (a national or international trademark registry).
• An 〈ipr:entitlement〉 element that indicates whether the applicant holds the trademark as the original “OWNER”, “CO-OWNER” or “ASSIGNEE”.
• An 〈ipr:appDate〉 element that indicates the date the Registered Mark was applied for.
• An 〈ipr:regDate〉 element that indicates the date the Registered Mark was issued and registered.
• An 〈ipr:class〉 element that indicates the class of the registered mark.
• An 〈ipr:type〉 element that indicates the Sunrise phase the application applies for.
Note that some of these extensions might be subject to change based on ICANN-developed requirements for the Trademark Clearinghouse and also specific implementation of the Sunrise process at the Registry.
29.3.5 Committed Resource to Carry out plans
Both Afilias and Namesphere as the Registry Back-End and Registry Front-End Services provider respectively have teams prepared and dedicated with capacity and capability to implement a comprehensive Sunrise and Startup process as well as the additional RPM measures that the Registry intends to put in place.
29.3.6 Rights Protection as A Core Objective
Based on the in depth discussion and commitment to the multitude of RPM features as well as a multi-phased startup process to ensure the stable and orderly introduction of the TLD, the Registry believes that it has demonstrated its commitment to rights protection as a core objective.
Beyond RPMs, the comprehensive geographical names protection program as explained in #22 further demonstrates the dedication of the Registry towards the protection of the prior rights of others.
29.3.7 Effective Mechanisms in Addition to Requirements in Registry Agreement
The policies and processes proposed by the Registry are proven and time tested to be effective in curbing abusive registrations. The .ASIA sunrise processes were highly regarded by the industry and yielded 100% satisfaction rating from an online poll of Intellectual Property Rights practitioners.
Much of the approach has been tested and proven successful through the launch of the .ASIA TLD. The success of the process can be observed by the imitation or following of the processes, including the multi-phased startup, the auction based contention resolution, as well as the Pioneer Domains Program (i.e. an Request for proposal -- RFP -- type process) are now commonly used processes when a TLD is launched or certain section of names are released by a TLD (e.g. 1 and 2 character names in existing gTLDs).
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