In order to defend trademark rights more effectively, the additional solution provided by the Abused DNL Service has been set up within the TMCH. This service is now operational.
The Abused DNL Service: what does it offer?
This is a system that allows a trademark already registered in the TMCH to be linked to a maximum of 50 domain names that have already been disputed (abused labels) that concern the mark that has in fact been integrated into the TMCH.
These abused labels will then benefit from a more extensive Trademark Claims Service (TCS) during the period when new gTLDs are opened to the public. As a reminder, the TCS is a warning system that notifies Internet users registering domain names of the existence of prior rights and alerts rights holders in the event of registration of domain names identical to their trademarks. The TCS is activated for all marks registered with the TMCH. The abused labels will expand the system of automatic alerts to include domain names that suffered previous infringements in other TLDs.
Who can benefit from the Abused DNL Service?
The prerequisite is to have registered trademarks with the TMCH. The eligibility criteria for obtaining this complementary protection are, however, restrictive:
- The domain names must have been the object of either a UDRP decision or a legal ruling;
- It only involves those cases in which it was proven that the names had been registered illegally;
- This service is only open to marks registered with the TMCH. In fact, the marks cited in the UDRP or legal decision must exactly match those registered in the TMCH (same registration number and same jurisdiction).
If a decision involves several domain names, the mark holder can choose to include one, several or all the names affected by the decision.
As an example:
Lego Juris A/S. registered with the TCMH the Chinese mark LEGO n° 75682 which had been duly validated.
Lego won a case before the UDRP, OMPI litigation n° D2013-0683, concerning the domain name <legobox.net>.
The Chinese mark LEGO n° 75682 was cited in the decision.
Lego will therefore be able to add the term “legobox” as a label to its Chinese mark LEGO n° 75682 registered in the TMCH.
Which documents must be provided?
- For a UDRP decision:
– the name of the arbitration centre that gave the ruling
– the case number
– the language used in the case
– the domain name(s) involved without the string
– a copy of the decision if it cannot be located in the online database
- For a judicial ruling:
– a copy of the decision
– the country in which the decision was rendered
– the name of the jurisdiction that gave the ruling
– the case reference number
– the language used in the case
– the domain name(s) involved without the string
How useful is this new service?
The usefulness of this service, though addressing real issues, remains limited. In reality, the abused labels registered only trigger the TMCH notification system, the Trademark Claims Service, once the names have been registered; no block will be applied if the mark is merely registered with the TMCH.
Accordingly, during the 90 days after the new string has been opened to the public, the applicant may receive notification warning him that the name he wishes to reserve is likely to infringe the trademark rights of a third party, and a reference to litigation will be included in the notification. The applicant is then free to pursue the registration or not, being fully informed of the violation of the trademark rights of a third party that has already been recognized either inside or outside the courts.
Equally, during the 90 days after the new string has been opened to the public, the rights holder will also receive notification informing him of a potential case of cybersquatting if the applicant confirms the registration of the name despite the warning received.
The system does not allow for the registration of domain names in the new strings but could nevertheless have a dissuasive effect.
Length of subscription of domain names (labels)
The length of registration of contested domain names (abused label) in the TMCH is linked to the length of subscription of the trademark to which they are associated.
If the mark has been registered for several years, the subscription to the abused labels will be identical to that of the trademark. They will expire on the same date.
As an example, if the mark is registered for a duration of 3 years as of 1st January 2014, and a contested domain name associated with this mark is registered in March 2014, it will only be registered until January 2017, at which time the registration of the mark must be extended in the TMCH.
What costs are involved?
The anticipated costs depend on the nature of the decision, whether based on a UDRP ruling or a judicial decision.
- For a UDRP decision:
A 50$ USD fee per decision + 1$ USD per domain name (label) registered for one year.
An additional fee of 25$ USD will be required when the mark’s subscription is renewed in the TMCH if the label has only been registered for one year.
- For a judicial decision:
A 150$ USD fee per decision + 1$ USD per domain name (label) registered for one year.
An additional fee of 25$ USD will be required when the mark’s subscription is renewed in the TMCH if the label has only been registered for one year.
We are at your disposal should you wish to explore the opportunity to make use of this complementary system.