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This year, hundreds of new generic top-level domains (gTLDs) are changing the landscape of the Internet.  The long-awaited result of ICANN’s new gTLD program, top-level domains such as .NYC, .WINE, and .WTF will now join the familiar ranks of domains such as .COM and .NET.  As we’ve <a href="http://www.ipintelligencereport.com/2013/02/14/mcdonalds-xerox-yahoo-or-even-college-icann-clarifies-procedure-for-objecting-new-gtlds/">written about previously</a>, ICANN provided brand owners, trademark holders, and distinct communities the opportunity to object to proposed gTLDs before they were approved or “delegated” to registry operators.  The window for filing these objections ended in March of 2013 and the final objections were resolved in early 2014.  While some top-level domains were successfully blocked by this objection process, the majority of objected-to domains were cleared for delegation.  However, even though ICANN’s gTLD Objection Procedure has closed, brand owners may now have a second opportunity to object to top-level domain registry operators’ complicity or participation in trademark infringement, whether stemming from use of a gTLD string itself or second-level domains registered in the domain.
Overview of Procedure

The “Trademark Post-Delegation Dispute Resolution Procedure” (PDDRP) allows trademark holders to bring a complaint when they believe that their marks (registered or unregistered) have been infringed by a registry operator’s “manner of operation or use of the gTLD.”  Notably, the PDDRP is not a remedy against registrants in a domain, but may only be used against gTLD registry operators.

At least 30 days prior to filing a complaint, a trademark holder must notify the registry operator of its concerns and the specific conduct it believes constitutes infringement. The complainant must also express a “willingness to meet and resolve the issue.”  Assuming issues are not informally resolved during this thirty-day period, a complainant must assert and prove by clear and convincing evidence one of two standards to succeed in its claim, depending on if they are claiming infringement based on the operation of the top-level domain or the registration of second-level domains:

Top-Level Complaints

Trademark owners may bring a PDDRP complaint based on a registry operator’s use of a gTLD string. To succeed, a complainant must prove by clear and convincing evidence that the gTLD string is identical or confusingly similar to a mark owned by the complainant, that they have suffered material harm, and that the registry operator causes or materially contributes to the gTLD doing one of the following:
(a) taking unfair advantage of the distinctive character or the reputation of the complainant’s mark;
(b) impairing the distinctive character or the reputation of the complainant’s mark; or
(c) creating a likelihood of confusion with the complainant’s mark.
An example provided by ICANN would be where a gTLD is identical to a complainant’s mark, and the registry operator holds itself out as the beneficiary of the complainant’s mark.  

Second-Level Complaints

A trademark owner may also bring a complaint based on the second-level domain registrations allowed by a registry operator.  To succeed here, a complainant must prove by clear and convincing evidence that it has suffered material harm, and that by the registry operator’s conduct:
(a) there is a substantial pattern or practice of specific bad faith intent by the registry operator to profit from the sale of trademark infringing domain names; and
(b) the registry operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD that are identical or confusingly similar to the complainant’s mark, which:
(i) takes unfair advantage of the distinctive character or the reputation of the complainant's mark;
(ii) impairs the distinctive character or the reputation of the complainant's mark; or
(iii) creates a likelihood of confusion with the complainant's mark.
Complaints may be filed with one of three PDDRP providers appointed by ICANN.  Once filed, complaints are subject to an “Administrative Review,” evaluating the procedural soundness of the complaint, followed by a “Threshold Review,” determining whether or not the complaint meets the minimum standing requirements and asserts a sufficient claim. Both the Administrative and Threshold Reviews are conducted by one-member expert panels appointed by the PDDRP provider.

Complaints that withstand these two initial reviews will then be evaluated on the merits by a 1-3 member Expert Panel, which is also appointed by the PDDRP provider.  Any discovery permitted during the evaluation is at the discretion of the Expert Panel, but must be limited to only those circumstances where a party has a “substantial need” for discovery.

Additionally, hearings may be held in the course of resolving a complaint if requested by a party or if the Expert Panel determines that one is necessary. These may include live testimony, arguments, and cross-examination. However, ICANN strongly encourages the use of videoconferencing if at all possible and limiting hearings to no more than one day.

Remedies

The PDDRP requires that the Expert Panel submit its ultimate recommendation to ICANN, who then decides whether or not it will accept and impose the recommended remedy. The remedies provided for under the PDDRP reflect the fact that actions may only be initiated against registry operators, and not registrants of second-level domains.   Accordingly, the PDDRP does not give Expert Panels the option to recommend the deletion, transfer, or suspension of second-level domain registrations (except to the extent they are owned by the registry operator or its affiliates.)

The remedies that can be recommend by an Expert Panel include:
<ul>
	<li>Requiring the registry to employ measures protecting against future infringing registrations;</li>
	<li>Prohibiting registration of new domain name registrations until violations identified by the panel are cured; or</li>
	<li>In extraordinary circumstances where the registry operator acted with malice, terminating the Registry Agreement.</li>
</ul>
Unlike the gTLD Objection Procedure, the PDDRP allows for a de novo appeal of any expert determination.  Appeals are heard by a three-member Appeal Panel, appointed by the PDDRP provider, which may not consist of any members that served on the Expert Panel.  An Appeals Panel may hear additional evidence and testimony, whether or not such evidence pre-dates the filing of the complaint.  Providers are responsible for determining the specific rules and procedures for appeals.

Finally, ICANN explicitly provides that the PDDRP does not preclude complainants from seeking redress in courts simultaneously with or subsequent to a PDDRP proceeding.  Further, ICANN provides that PDDRP Expert Determinations may be reviewed by a court of law.
.           .           .
In sum, the PDDRP offers brand-owners a second bite at the apple in objecting to new gTLD’s that may infringe their trademark rights.  While the remedies are not the same as the previous gTLD Objection Procedure, where a successful complaint could preclude delegation of a top-level domain name with no clearly defined right of appeal, the PDDRP nonetheless offers brand owners important recourse against gTLD operators engaging in, or encouraging, harmful infringing conduct.

Similar to the PDDRP, we note that ICANN also provides the new <a href="http://newgtlds.icann.org/en/applicants/agb/rrdrp-04jun12-en.pdf">Registry Restrictions Dispute Resolution Procedure</a> (“RRDRP”), which addresses circumstances in which a New gTLD deviates from community-based restrictions in its registry agreement. A “community-based” gTLD is a gTLD operated for the benefit of a clearly delineated community, and accordingly, restricts the individuals and entities that may register domains in the gTLD. To have standing, a complainant must show that it is an established institution associated with a defined community related to the gTLD string at issue.  Additionally, a complainant must establish that the defined community “consists of a restricted population that the gTLD supports.”  Finally, to make a successful claim, a complainant must prove that the gTLD Operator violated its own community-based restrictions in its registry agreement and that there is a measurable harm to the Complainant and the community at issue. An example might be a company that registers a community-restricted top level domain for licensed engineers only to later have that registration devalued when the registry allows non-licensed engineers to register second level domains.  The RRDRP thus provides brands an important tool to protect the communities for what the community-based TLD’s were intended.

Baker &amp; Hostetler LLP has extensive experience handling domain name dispute proceedings, including disputes related to the operation of top-level domains.  For more information about the PDDRP, RRDRP, or other domain name dispute procedures, contact David A. Einhorn.

Challenging Delegated Top-Level Domains: ICANN’s Trademark Post Delegation Dispute Resolution Procedure