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

      Аннотация: This study examines the scope of protection for trademarks in situations where they have been used as Internet addresses, 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 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. 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?

Ключевые слова: dispute resolution, domain name, Intellectual Property Law, Internet, law and economics, legal positivism, Protection, Strategy, Trade Mark, TRIPS, UDRP, URS, lex digitalis