Uniform Rapid Suspension: Protecting Trademark Rights on the Expanding Internet

As you surely have heard before, the time for change is upon us. Well, ICANN, the group that coordinates the Internet's naming system, is really going to make that change. The Internet already has changed people's lives around the world, and according to Tina Dam, Senior Director of Internationalized Domain Names at ICANN, we are about to see "...the biggest technical change to the Internet's addressing system¼in many years." That is, the Internet naming system soon will expand to include domains comprised of local language characters. In the coming months we will begin to see Internet addresses in Chinese, Arabic, Thai, and other alphabets. This begs the question, How do you say or spell Best Buy in Chinese? I think it's 最好购买. At least what Google Translate tells me.>

Whether or not that translation is correct, domain name expansion could be a trademark owner's greatest nightmare, already having to deal with cybersquatters and others whose only tools up to now had been Latin characters. So, how does ICANN plan to address these trademark issues? Well, it proposes what it calls the Uniform Rapid Suspension (URS) Procedure, which is an expedited process to provide trademark holders with a rapid take-down of infringing sites in clear cut instances of trademark abuse. While the standard generally would be the same as the already existing Uniform Domain-Name Dispute-Resolution Policy (UDRP), trademark holders would have a higher burden of proof to meet under the new procedure. Trademark holders would have to show (1) that the registered domain name is identical or confusingly similar to a mark in which the Complainant (2) holds a valid registration issued by a jurisdiction that conducts a substantive examination of trademark applications prior to registration; and (3) that the Registrant has no legitimate right or interest to the domain name and; (4) the domain was registered and is being used in bad faith. As these matters develop there we will see how the procedures will be implemented and surely will merit commentary in the future.

What we do know now, however, is that avoiding an issue in the future is always the best policy. Businesses and others should prepare for the upcoming Internet name expansion, secure newly available domains, and capitalize on that virtual real estate ICANN will make available. Develop a plan and make a domain name wish list, consider your target audience and the language(s) it speaks, and weigh the factors relevant to you in making that list.

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