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12|12|2012 11:20 am EDT

.pw: A leader in trademark protection?

by Frank Michlick in Categories: Legal Issues

The following is a guest post by Kate Moran of TM.Biz, .PW’s trademark validation agent.

As you may know, on December 3rd .pw (the ccTLD for Palau) kicked off its sunrise offering. It is a relaunch of a country-code to the general public – however, equally noteable is that it is one of the first top-level domains to deploy some of the advanced Rights Protection Mechanisms currently being debated by the ICANN community.

ICANN is currently trying to finalize the specifications of the Trademark Clearinghouse and the level of protection afforded to trademarks.  Under discussion is coverage beyond exact matches of trademarks. The opposition is pushing back furiously, claiming that these expansions were already discussed, dissected and shot down several times in the past few years.

The .pw registry is proposing to protect not only exact matches, but also any domain containing the trademark, misspellings, abbreviations and language translations of the validated trademark.  The trademark validation agent, TM.Biz is coupling these rules with automated searches of 70 trademark databases.

Trademark owners may include any variant of their trademark that has been subject to cybersquatting.  In the case of misspellings not being intuitive,TM.Biz will ask for documentation demonstrating past use by third parties.  TM.Biz’s validation agents will use open source tools to verify translations and may also  request documentation from the trademark owner.

Finally, premium generic strings are registry-reserved and are not generally available for sunrise.  If there are competing sunrise applications for the same string, the level of similarity will be examined,  i.e. if they are both exact matches or one if an exact match and the other is due to a misspelling or other variant.  If they are both due to the same level of similarity, then the names go to auction.  Otherwise, the more exact match would prevail and there is no auction.

The outcome of the recent ICANN debates are still unclear. However, the market’s reaction to the .pw Sunrise should serve as a barometer of interest for expanded trademark protection. In addition, the registry will be able to attest to whether offering expanded trademark protection is an easy process or a very complicated one.

The .PW Sunrise will be a great test and ICANN needs to pay attention. Will the trademark industry take advantage of this expanded trademark protection, as they claim they will? 

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