Ten Essential Bookmarks for Understanding Domain Name Law

By Doug Isenberg Keeping up with domain name law and news is a challenging task, but after nearly 17 years of legal practice in this area, I've compiled a short list of "go-to" websites that keep me informed and educated. Here, then, are the best and most important sites I visit on a regular basis (some, daily), which should be of help to anyone interested in this area of law:

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1. ICANN's UDRP Page. This website contains the text of the Uniform Domain Name Dispute Resolution Policy (UDRP), the most important document for resolving domain name disputes. Although I can recite large parts of it verbatim sight-unseen, I still refer to it (and the UDRP Rules linked to it) regularly when advising clients on domain name disputes, drafting UDRP complaints (or, occasionally, UDRP responses) or writing UDRP decisions in my role as a panelist.

2. WIPO's "Domain Name Dispute Resolution" Page. Probably one of the best sources of information about the UDRP and other domain name dispute policies, the website of the World Intellectual Property Organization (WIPO) offers a searchable database of decisions, statistics about domain name disputes, filing details, information about country-code top-level domains (ccTLDs), model forms and much more.

3. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.  Although a part of the WIPO website listed above, the "Overview" is important enough to merit its own spot on my list. I often refer to this document as a "mini treatise" on the most important and challenging issues in UDRP cases. It offers the "consensus or clear majority views" on these issues, based upon thousands of UDRP decisions through the years.

4. National Arbitration Forum's Page on Domain Name Disputes.  The NAF is the second-most popular provider of domain name dispute services (behind WIPO), and, like WIPO, its website offers a very useful and searchable database of domain name dispute decisions (as well as basic information about the process). As the first approved provider of services under the forthcoming Uniform Rapid Suspension System (URS), NAF's website likely will become even more important.

5. ICANN's Microsite for the New Generic Top-Level Domain Program. With more than 1,900 applications for new generic top-level domains (gTLDs) in the pipeline, I am now visiting ICANN's microsite on a daily basis to review the status of applications, monitor news, and gain access to resources essential to the important objection process.

6. InterNIC. Often overlooked (and quite dated in its appearance), the InterNIC website still offers authoritative information about "whois" domain name records (and a link to report inaccurate listings) and a complete list of ICANN-accredited registrars, with contact information.

7. IANA's "Root Zone Database."  Now a department of ICANN, the Internet Assigned Numbers Authority (IANA) offers a simple and complete list of information about ccTLDs and is often my first stop when I want to learn about registration requirements and dispute details for a ccTLD I don't often encounter.

8. DomainTools. This website boasts that it has "the most comprehensive collection of domain name ownership records in the world," and it is very useful (though often for a fee) for finding historical whois records, related domain names and other information helpful for domain name disputes.

9. Internet Archive's "Wayback Machine." This website says that it offers "over 240 billion web pages archived from 1996 to a few months ago" -- all for free. I often use it to discover how domain names were used in the past, which can be quite helpful in negotiating domain name sales or preparing filings for domain name disputes. It is often referred to in UDRP decisions (including at least one by yours truly) as “a reputable source for tracking the history of some content on the Internet.”

10. Domain Incite. There are many websites that offer news about domain name developments, but I especially like Domain Incite because of its breadth and fairness. I also enjoy DN Journal, which offers weekly updates on domain name sales; and Domain Sherpa, which offers excellent video interviews with domain industry players and a weekly news roundup.

This list is certainly not comprehensive, as many other sites offer great resources on domain name news and law, but I consider these among the most helpful. If you have others to suggest, please drop me a note.

What You Really Need to Know About ICANN's Trademark Clearinghouse

By Doug Isenberg Although ICANN's recently launched Trademark Clearinghouse (TMCH) boasts that it will help you "protect your trademark online," the truth is that while it offers some important protections, it also has significant limitations. And, despite all of the recent webinars, news articles and client alerts, a number of misunderstandings persist.

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To be certain, the TMCH is an important part of the new top-level domain (gTLD) program, and trademark owners would be foolish not to participate in it. But, no one should be lured into a false sense of online brand security simply because they have submitted their trademarks to the TMCH.

Yes, by registering your trademarks with the TMCH in a timely manner, you will be able to participate in appropriate "sunrise" periods as new gTLDs come online. And, for limited periods of time, others will be alerted of your rights.

But, keep in mind the following shortcomings of the TMCH:

Registering a trademark with the TMCH does not entitle you to any domain names. Rather, if you have participated in the TMCH, you will be allowed to participate in the sunrise period offered by each new gTLD registry -- which means only that you will have an early opportunity to pursue registration of (and payment for) a domain name that corresponds to your trademark.

TMCH participants are not guaranteed domain name registrations even during the sunrise periods. Each new registry is required to have a Sunrise Dispute Resolution Policy (SDRP), which will "allow challenges" to registrations. Plus, there may be instances in which multiple TMCH registrations have been filed for the same mark, as in the case of dictionary terms (think Delta or United) or competing trademark owners (think Playtex or Scrabble). Indeed, ICANN has clearly passed the buck on this issue, saying: "If two different rights holders try to register the same mark as a domain name in the same TLD, the registry has a process for working that out."

The TMCH's "Trademark Claims Service" won't prevent cybersquatting. For a limited time after each sunrise period, prospective domain name registrants will be notified when they seek to register domain names that correspond to marks registered in the TMCH -- but, such registrants will be allowed to proceed if they simply acknowledge the notice.

The TMCH's attenuated protections are limited to "exact matches" and other narrow criteria. Fortunately, ICANN recently agreed to broaden the scope of a trademark owner's rights from "exact matches" of its registered marks to those "that have been found to be the subject of abusive registrations (for example, as a result of a UDRP or court proceeding)." But even this expansion won't offer any protection to trademark owners against blatant (but previously unenforced) forms of cybersquatting.

In light of all of these limitations, trademark owners must remember that reactive enforcement (including via the URS and the UDRP) -- not just proactive protection via the TMCH -- will remain an important strategy for online brand protection as new gTLDs launch.