New generic top-level domain names and trademark protection - The expanding Internet in the light of UDRP and URS cases

This study examines the scope of protection for trademarks in situations where they have been used as Internet addressed, i.e. domain names. The focus of the analysis is on domain names registered in new generic top-level domain names (gTLDs) and on the related case practice by panels in two out-of-court administrative dispute resolution procedures, the Uniform Domain Name Dispute Resolution Policy (UDRP) established in 1999 and the Uniform Rapid Suspension System (URS), a new procedure introduced in 2013 to complement the UDRP. The research methods and theoretical framework are versatile. In addition to legal dogmatics, also the following approaches have been used: law and economics, legal positivism and lex digitalis. The point of view is primarily that of a trademark holder engaged in business. In total, 153 UDRP cases and 194 URS cases have been studied. A successful complainant has to prove all elements of the three-prong test, which is substantially similar in both the UDRP and URS proceedings. The test involves the following parts: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights, (ii) the respondent (i.e. domain name holder) has no rights or legitimate interest in respect to the domain name, and (iii) the domain name has been registered and is being used in bad faith. The principal research questions are as follows. (i) What are the key elements of the new gTLD program? (ii) What empirical characteristics describe new gTLD cases? (iii) Have the new gTLDs brought about any changes to the previous interpretation of the three-prong test, and are there any common patterns or significant divergence relating to this interpretation within each procedure and between them? (iv) More generally, how could the advent of new gTLDs affect trademark protection? The most central research results are as follows. (i) Two polar approaches may be adopted in relation to the new gTLDs, the Irrelevance Approach and the Relevance Approach. I develop a framework for evaluating their relative merits. Under the Relevance Approach the new gTLDs may be considered relevant in the application of the three-prong test, whereas under the Irrelevance Approach their relevance is not considered. The Irrelevance Approach has been predominant when evaluating the three-prong test in both procedures, the main exception being the application of the Relevance Approach by a quarter of the UDRP panels in relation to the first element of the test. (ii) Trademark holders should use the URS in the most infringing cases since the URS is substantially faster than the UDRP but it provides only a limited remedy option. (iii) Cybersquatting will most likely increase in the future. (iv) Trademark holders could use a proactive, defensive and/or passive strategy in the online name space. When making strategic decisions, central aspects for trademark holders to consider could involve cost-efficiency, limitedness of resources, and signaling effects. Finally, I stress that trademark protection strategies both offline and online should be unified to create competitive advantage