The World Intellectual Property Organization has recommended the introduction of a uniform intellectual property protection mechanism designed to curb unauthorized registration of domain names, or “cybersquatting,” in all new generic Top-Level Domains.
The move follows a report issued by WIPO’s Arbitration and Mediation Center about the IP implications of introducing additional gTLDs.
“New Generic Top-Level Domains: Intellectual Property Considerations” notes that a universal preventive mechanism would complement the curative relief provided by the Internet Corporation for Assigned Names and Numbers’ Uniform Domain Name Dispute Resolution Policy by requiring registrars to implement defensive registrations, exclusion mechanisms, and pre-registration policies.
“The introduction of a new gTLD presents particular challenges for intellectual property owners seeking to protect their domain names against unauthorized registration by third parties,” says Francis Gurry, WIPO Deputy Director General who oversees the work of the Arbitration and Mediation Center. “With the growth of Internet usage and electronic commerce, the strategic importance of domain names as business identifiers has grown significantly."
Gurry also says intellectual property owners may have only one true protection against having their identifying marks grabbed by cybersquatters: registering URLs for their entire trademark portfolios.
"If domain names are randomly attributed in newly opened gTLDs, IP owners will be forced to compete with cybersquatters for their own trademarks—unless additional safeguards are introduced," he says.
WIPO’s report was prepared in response to a request made by ICANN, the institution charged with overseeing the functioning of the domain name system. Following the introduction of seven new gTLDs in 2000 (.aero, .biz, .coop, .info, .museum, .name, .pro), ICANN is developing a comprehensive strategy for further expansion of the DNS. The report provides input into that strategy from an intellectual-property and dispute-resolution perspective.
WIPO’s report focuses exclusively on the intellectual property aspects that need to be considered if and when extensions of the domain name space take place, and does not comment on whether further extensions are necessary or desirable. According to the organization, an additional mechanism to prevent unauthorized registration of domain names during the critical introductory phase of a new gTLD would strengthen the ability to combat the still-widespread practice of cybersquatting.
The report summarizes the WIPO Center’s experience in implementing various intellectual-property protection mechanisms developed by a number of new gTLDs and provides a comparative evaluation of existing approaches. It notes a trend among TLDs toward sunrise mechanisms (the possibility for IP owners to register their identifiers before the general public). Experience shows the need for IP protection mechanisms is most tangible in open gTLDs, the WIPO Center notes, which are not subject to clearly defined and policed registration restrictions and which accept domain-name applications from the general public. The fewer restrictions and prior verification requirements associated with the registration process, the greater the risk of abusive registrations.
WIPO’s recommendations during the First WIPO Internet Domain Name Process in 1999 led to the adoption of the UDRP, a quick and relatively cost-effective alternative to litigation over domain-name disputes. Under the UDRP, a complainant must demonstrate that the disputed domain name is identical or confusingly similar to his or her trademark, that the respondent does not have a right or legitimate interest in the domain name, and that the respondent registered and used the domain name in bad faith.
