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| The [[Trademark Clearinghouse]] was established for owners of registered trademarks to have a single registration procedure for all new gTLDs.<ref name="tmch">[https://newgtlds.icann.org/en/about/trademark-clearinghouse ICANN.org - Trademark Clearinghouse]</ref> Registered marks may be submitted to ICANN for authentication, and in turn that registration information is distributed to all registries and registrars.<ref name="tmch" /> The trademark holders also receive notice when a domain matching the registered mark is registered in any gTLD.<ref name="tmch" /> | | The [[Trademark Clearinghouse]] was established for owners of registered trademarks to have a single registration procedure for all new gTLDs.<ref name="tmch">[https://newgtlds.icann.org/en/about/trademark-clearinghouse ICANN.org - Trademark Clearinghouse]</ref> Registered marks may be submitted to ICANN for authentication, and in turn that registration information is distributed to all registries and registrars.<ref name="tmch" /> The trademark holders also receive notice when a domain matching the registered mark is registered in any gTLD.<ref name="tmch" /> |
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| ====Trademark Post-Delegation Dispute Resolution Procedure (PDDRP)==== | | ====[[Trademark Post-Delegation Dispute Resolution Procedure]] (PDDRP)==== |
| The PDDRP is designed to provide trademark holders (whether those marks are registered or not) to dispute the actions of a gTLD registry operator.<ref name="pddrp">[https://www.icann.org/resources/pages/pddrp-2014-01-09-en ICANN.org - PDDRP Resources]</ref> There are two available claims under the PDDRP: | | The [[Trademark Post-Delegation Dispute Resolution Procedure|PDDRP]] is designed to provide trademark holders (whether those marks are registered or not) to dispute the actions of a [[gTLD]] registry operator.<ref name="pddrp">[https://www.icann.org/resources/pages/pddrp-2014-01-09-en ICANN.org - PDDRP Resources]</ref> The mark holder can challenge the management of a gTLD, or a "bad faith" policy of registering second-level domains within a gTLD. Perhaps because of the stringent evidentiary standard, the relative difficulty of proving a pattern of registry behavior, and the filing costs for such a complaint, the procedure has never been used as of March 2021.<ref>See our [[Trademark Post-Delegation Dispute Resolution Procedure|main article]] for more information</ref> |
| #Top-level: claimant must show abuse of a gTLD string that is "identical or confusingly similar" to the trademark in order to take commercial advantage of the mark, dilute the distinctiveness of the mark, damage the reputation of the mark holder, or create a likelihood of confusion.<ref name="proc">[https://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf ICANN.org - PDDRP Procedure (PDF)]</ref>
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| #Second level: claimant must show "a substantial pattern or practice of specific bad faith intent" to profit from "systematic registration of domain names within the gTLD that are identical or confusingly similar to the complainant’s mark," with the same consequences as claims at the top level: commercial advantage, dilution, damage to reputation, or consumer confusion.<ref name="proc" />
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| Both claims carry a heavy burden of proof for the claimant. The evidentiary standard for both claims is "clear and convincing," which is considered a more rigorous standard, though not as rigorous as standards in criminal cases (beyond a reasonable doubt).<ref name="proc" /><ref>[https://www.law.cornell.edu/wex/clear_and_convincing_evidence Definition of "clear and convincing,"] Cornell Legal Information Institute</ref> At the second level, the procedure document takes pains to exonerate the registry operator of the actions of unaffiliated registrants:
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| <blockquote>In other words, it is not sufficient to show that the registry operator is on notice of possible trademark infringement through registrations in the gTLD. The registry operator is not liable under the PDDRP solely because: (i) infringing names are in its registry; or (ii) the registry operator knows that infringing names are in its registry; or (iii) the registry operator did not monitor the registrations within its registry.<br />A registry operator is not liable under the PDDRP for any domain name registration that: (i) is registered by a person or entity that is unaffiliated with the registry operator; (ii) is registered without the direct or indirect encouragement, inducement, initiation or direction of any person or entity affiliated with the registry operator; and (iii) provides no direct or indirect benefit to the registry operator other than the typical registration fee (which may include other fees collected incidental to the registration process for value added services such enhanced registration security).<ref name="proc" /></blockquote>
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| After receiving the initial complaint, the dispute resolution service provider reviews the complaint for completeness and compliance with the procedural rules. Then, the provider appoints a one-panelist "Threshold Review Panel" to review the validity of the claim.<ref name="proc" /> This process is somewhat comparable to a summary judgement proceeding<ref>[https://www.law.cornell.edu/wex/summary_judgment "Summary Judgement,"] Cornell Legal Information Institute</ref> in civil court: the complaint is evaluated for sufficiency of evidence, proof of harm, and other proofs of fact. However, it is initiated automatically rather than on motion from one of the parties. It can also create additional costs for the complainant. In WIPO's supplemental procedural rules, for example, the respondent has the option to submit a $500 filing fee, which requires complainant to match the fee. If the complaint does not pass threshold review, respondent's fee is refunded.<ref>[https://www.wipo.int/export/sites/www/amc/en/docs/supplrulestmpddrp.pdf WIPO - PDDRP Supplemental Rules (PDF)]</ref>
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| Perhaps because of the difficulty of proving a case, the PDDRP mechanism has not been utilized often (or at all). ICANN has established agreements with three PDDRP service providers: WIPO, the National Arbitration Forum, and the Asian Domain Name Dispute Resolution Centre.<ref name="pddrp" /> None of these service providers have reported decisions of cases under the PDDRP. The Final Report of GNSO's Phase 1 Review of all Rights Protection Mechanisms notes that there has never been a complaint.<ref name="pdpreport">[https://gnso.icann.org/en/issues/council-recommendations-rpm-pdp-phase-1-report-10feb21-en.pdf RPM PDP Phase 1 Report], February 10, 2021 (PDF)</ref> The GNSO recommended that it be made more clear that proceedings could be initiated by a group of claimants against a specific registry operator.<ref name="pdpreport" /> The recommendation notes that this was always implied by the procedures, but that clarifying the right for a "class" of complainants to initiate a complaint might spur use of the mechanism.<ref name="pdpreport" />
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| ====[[Uniform Rapid Suspension]] (URS)==== | | ====[[Uniform Rapid Suspension]] (URS)==== |
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| <blockquote>To restate in another way, if the Examiner finds that all three standards are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favor of the Complainant. If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding without prejudice to the Complainant to proceed with an action in court of competent jurisdiction or under the UDRP.<ref name="ursproc" /></blockquote> | | <blockquote>To restate in another way, if the Examiner finds that all three standards are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favor of the Complainant. If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding without prejudice to the Complainant to proceed with an action in court of competent jurisdiction or under the UDRP.<ref name="ursproc" /></blockquote> |
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| ==[[[[PDP Review of All Rights Protection Mechanisms in All gTLDs|GNSO Review of Rights Protection Mechanisms]]== | | ==[[PDP Review of All Rights Protection Mechanisms in All gTLDs|GNSO Review of Rights Protection Mechanisms]]== |
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| In 2016, the [[GNSO]] initiated a [[Policy Development Process]] to [[PDP Review of All Rights Protection Mechanisms in All gTLDs|review all of ICANN's rights protection mechanisms]] in all [[gTLDs]].<ref>[https://gnso.icann.org/en/drafts/rpm-charter-15mar16-en.pdf RPM Working Group Charter], March 15, 2016 (PDF)</ref> | | In 2016, the [[GNSO]] initiated a [[Policy Development Process]] to [[PDP Review of All Rights Protection Mechanisms in All gTLDs|review all of ICANN's rights protection mechanisms]] in all [[gTLDs]].<ref>[https://gnso.icann.org/en/drafts/rpm-charter-15mar16-en.pdf RPM Working Group Charter], March 15, 2016 (PDF)</ref> |