1. New gTLD Rights Protection Mechanisms & RPMs Review

2. What we will cover Additional New gTLD Dispute Procedure
Uniform Rapid Suspension (URS)
Defensive New gTLD Program RPMs
What they are
Why they still matter
Review of all RPMs in All gTLDs
What is happening and when
Potential RPM changes
How you can input…and why you should

3. What is the new gTLD program
Who applied?
Impact on market
For Brand Owners
Competition for .com
Round One opens 2011
$185,000 to apply
Expected 500 applications
Received applications of which unique
899 investors for Open registries
255 geos
637 closed brands like Microsoft, Sky
255 brand keywords like .safety
22 gTLDs in >1200 gTLDs in 2016
First New gTLD, SHABAKA (IDN), launches Jan 2014
Multiple TLDs launching thereafter
New registration opportunities
And Threats
Need to protect the brand, and the public
Cost
Admin burden
Need for new enforcement strategies
New gTLD RPMs developed

4. URS Pioneers “UDRP Light”
Registered mark; court-validated; or protected by Treaty or Statute
Key differences to UDRP:
Standard of proof
Speed
Remedy

5. Trademark Clearinghouse
Pioneers
What IS the TMCH:
Centralized database of verified trade mark data
Registered marks (word marks & device marks with clearly distinguishable words)
Court-validated marks
Protected by Statute or Treaty
Option to also submit evidence of use
TMCH operator verifies the TM data
Supports the Sunrise and TM Claims

6. Trademark Clearinghouse
Pioneers
What it is NOT:
Block on the registration of domain names
Creator or adjudicator of rights
Priority right over co-existing brands, if recorded
Guarantee of allocation of the domain name
So, not actually an RPM

7. Sunrise Pioneers Priority purchase period for trade mark owners
Marks recorded in the TMCH, with evidence of use (“SMD file”)
Individual registries may have additional eligibility requirements
Exact matches only – not typos or “mark +”
Minimum of 30 days duration:
Start date sunrise –allocated on application; minimum 30 days notice of start
End date sunrise – minimum 60 days duration; no specified notice period; names allocated at the end; conflicts often resolved by auction
Pioneers

8. Trademark Claims Pioneers
Notice to potential domain name registrants of an existing mark in the TMCH:
To proceed, registrant must give representation of non-infringement
If so, TM owner receives notice of the registration
Mandatory for 90 days of Registry general availability – after the Sunrise
Exact matches only – not typos or “mark +”
But up to 50 strings from UDRP/Court proceedings can be associated with the TMCH record
TMCH offers continuing notices just to TM owner
Pioneers

9. Still relevant? Currently in Sunrise: .MAKEUP .BLOG Not yet launched:
Internet/tech-related: .SEARCH .WEB .MOBILE
Sector-specific: .BOOK .ECO .MUSIC .SPORT .HOTEL
General: .INC .CORP .LLC

10. Review of All RPMs All RPMs in all gTLDs – inc. UDRP:
New gTLD RPMs – to Jan 2018
Currently considering TMCH
Draft report public comment Oct 2017
UDRP – from Jan 2018
Competing wish lists
Opportunities … and threats

11. Key Brand Owner Asks Cost Matching Rules - typos and “mark +”
Cross-Registry Block List
Stop RPM Circumvention, particularly by premium and reserved names
Don’t Dilute UDRP

12. What can you do? What is the harm? What are we trying to fix?
Need for quality examples and data
Look out for “calls to arms”
Feed in through ITMA Internet committee
Consider submitting public comments
Join the ICANN Intellectual Property Constituency
Join the ICANN RPMs Review WG activities/active/rpm

13. Head of Legal Policy, Valideus Ltd susan.payne@valideus.com
valideus.com
comlaude.com
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