Bart Lieben is an intellectual property attorney who has become the go-to guy for trademark verification for top-level domain Sunrise periods.

In my interview with Bart, he talks about how he does his job, with some tantalizing hints about a system he’s developing to make the whole trademark verification process much easier and cheaper.

AVC: Hi Bart

BL: Hey

AVC: Let’s just jump right in. Tell me where you’re based and the name of your company.

BL: I’m based in Brussels, Belgium. I am a partner with the law firm of Laga, one of the law firms that are aligned with Deloitte, the largest provider of professional services in the world. We are a full-service business law firm with lawyers specializing in a wide range of disciplines. One of them is intellectual property, technology, media and telecommunications law.

AVC: I know you did the examinations of the trademarks for the .eu sunrise — was that your first exposure to domain names?

BL: No - my first exposure to domain names was in 1998, where I took part in the discussions that led to the UDRP, albeit from a distance.

After the UDRP was implemented, WIPO started the so-called “second domain name process.” The UDRP was the result of the “first.” So, on the basis of the recommendations from this second process, the .BE registry decided to put in place an arbitration system for domain name registrations within their realm. I was one of the co-authors of that domain name dispute resolution policy, which - in terms of scope - is one of the largest around (still).

In 2004, I assisted EURid in directing the .eu Sunrise process, and have been assisting nine or so domain name registries ever since. On the basis of this working experience, ICANN has appointed us to assist them in the development of the evaluation criteria and process for the New gTLD Program.

AVC: I understand that you’re providing services for new TLDs. Are these the same services that you provided for .eu? Can you describe what they are?

BL: We are doing various things in the context of new gTLDs.
First of all, we help parties, companies and communities, to prepare for and participate in the new gTLD process. We carry out feasibility studies, draft business plans, connect future applicants with important players in the market, etc. Since we have been working with ICANN, various registries and hundreds of registrars, we avoid future applicants to reinvent the wheel …

Second, we are managing sunrise processes as we have done for .eu, .mobi, .asia, .me, .nl, and .tel.

Let’s start with companies and “brand-TLDs”. What we do here is providing an end-to-end service: we start off by making a feasibility analysis wherein an independent recommendation is given to the board of directors of the company whether or not it is a good idea to have a brand-TLD, what the risks and opportunities are, and what the total cost for the company will be.

In our experience, this is what is lacking with many of the consultants that are reaching out to brand owners: what most of them are proposing is to assist the company in “drafting the application”. Now, drafting the application is the easy part … They might therefore be perfectly successful in securing the TLD, but they forget about the overall picture, the impact on the company and the total cost of the exercise in managing the extension and the domain names registered therein. And this is the added value we bring in.

If the board decides to proceed, we help the company in drafting a business plan, a subset whereof are the responses to the questions asked by ICANN.

With respect to Communities: we see a lot of start-up activity here, and some ideas that actually might really be successful. What we bring in with them is our experience and expertise to organize in bringing their ideas to the market. Again: avoiding the duplication of efforts and reinventing the wheel. Over the past years, we have assisted four Community-based-like registries in launching their activities, so there we have quite some experience these future applicants can tap into.

AVC: Without revealing any secrets, how many companies do you think will apply for what some are calling “vanity” TLDs? Just a guess of the marketplace. Do you think there will be 200 companies applying to ICANN for a TLD to match their company name or main brand? Or more, or fewer?

BL: Hard to tell - I’m not really good in crystal ball gazing, but I guess there will be a hundred or so “early adopters”.

AVC: Thank you, that’s very helpful, because not many people have any idea of this market.

BL: I must say that we attract a lot of interest from big corporates. Now, these organizations in most of the occasions do not have a clue on how to approach this process. As I said before, the main aim of our service is to provide the company with a complete picture on what it takes to manage their own TLD. None of them are in the business of running a registry, so there is a lot of know-how to be transferred and handholding to be done …

Many of them have missed the boat in the nineties when they wanted to register their brands in the gTLDs and ccTLDs, and were confronted by cybersquatting. And they certainly do not want to have that experience again.

In brief, brand owners are coping with various issues:

if you read the comments that were submitted to ICANN, it is clear that brand owners are concerned about the new gTLD process. It is clear that sitting on the sidelines and wait until the new gTLDs will go away is simply not an option for them; since this is a new thing, many corporates are looking around and want to know what their competitors are doing. And when you dig a bit deeper in order to know their concerns, it is mostly because they want to be an early adopter themselves … in light of the above: the representatives we are talking to do not want to receive in two years time a telephone call from their CEO why they did not secure their brand as a gTLD; the complexity of applying for, setting up and managing a TLD: corporates understand that managing a TLD is not like registering a trademark or a domain name: there are many technical, operational, financial, and business criteria to be met.

Now 95% of the companies we have been talking to and are considering applying for their own gTLD want to have a full outsourced solution: they might spend the money in order to obtain the gTLD and manage it, but they will not spend five minutes in doing it themselves, because it is simply not their core business;

In order to meet the above concerns, we are carrying out feasibility studies for corporates, and recommend a strategy to the board. This recommendation could be not to participate, but at least the company has a basis on which they can take an informed decision.

AVC: When you do a feasibility study, what criteria do you look at?

BL: We have more then a hundred questions and discussion points that are aimed at helping corporates to get their heads around this. And this is for the feasibility study alone. Basically, it is a multidisciplinary exercise - with many angles and even more pitfalls for corporates.

For instance, we are looking at the suitability of the trademark (if you have a long trademark, it might be a bit silly to apply for the corresponding TLD, and some applications on the internet will not even recognize the extension). We are looking at the envisaged use of the gTLD, whether or not identical or similar trademarks or acronyms exist, and the likelihood of their owners applying for their own TLD, what their “community” definition would be and how they would be able to represent this community, etc.

We have developed specific methodologies in order to identify and quantify the values and risks of having a brand-TLD, and we analyze the total impact on the business. Again: we look at the complete picture, and this from an independent and objective point of view.

Most of the consultants or service providers that are targeting corporates or communities in the context of the new gTLD program have an interest that goes beyond submitting the application and launching the gTLD.

Since we are not a registrar nor a back-end registry operator, and are hence not looking at the “long tail”, we can provide companies, organizations and governments with an objective and independent opinion on whether a proprietary gTLD is something for them or not.

AVC: I notice that once there is a TLD, you cannot get a new TLD that is confusingly similar. Are any companies moving forward with a TLD application in order to exclude potentially infringing registrations in the future?

BL: Yes.

AVC: As I understand it, owning a TLD might this would prevent second-level infringements as well.

BL: This depends. You cannot exclude everything. There are actually three different approaches corporates take. 1) We are going for this, because we think it is strategically important. 2) Defensive: let’s wait and see. 3) No participation — we stand at the side-line and oppose against third parties in case they apply for a TLD that is identical or confusingly similar to our trademark. The problem with the last approach is that you need to demonstrate that there is infringement… and this is not clear at all. It is not because a TLD is identical or similar to your brand, that there is automatically infringement …

AVC: This would seem to be a new criterion for UDRP cases in the future. Are there procedures in place for this within ICANN or the UDRP framework?

BL: At the top level, ICANN has the opposition framework (officially: “infringement of rights of others”). At the second level, ICANN has the UDRP as Consensus Policy. The main concern brand owners have is that ICANN has not defined a uniform process whereby brand owners can secure their brands at the second level with the new gTLDs, or prevent such registration.

On the basis of the comments ICANN received up until December 15, it is clear that many brand owners are not quite positive about having new gTLDs, since this will require them to secure their brands in extensions they do not really see as valuable.

AVC: Can you expand on your community-based applicant comment? I’m not sure I understand.

BL: For instance, Deloitte is thinking of submitting an application for .DELOITTE. In order to have a domain name registration within .DELOITTE, they might impose the eligibility requirement that you must be a company that is part of the Deloitte network of firms or an employee of one of such firms. So if you make sure that you are meeting those requirements, it will simply be impossible for a company like eBay or Amazon to obtain a domain name registration.

AVC: And that would be seen as a “community” by ICANN?

BL: This again depends. There are various issues to consider when defining your community. What we suggest is to do this exercise in quite some detail; when you change your plans at a later stage, you might be required to renegotiate your contract with ICANN …

AVC: True, except that they will (they say) hold you to the restrictions you place on who can register.

BL: This is not more than normal, in my view. Assume that there are two parties who want to apply for a particular gTLD, and only one of them has opted for a community-based application. If he or she obtains the TLD, and starts operating it like an open TLD, this would not be fair towards the other applicant who has presented it as an open TLD from the outset.

Second, if you would be in contention (the likelihood we will determine in the context of the feasibility study), you must make sure that you jump all the hoops, and there is no problem of holding you to the restrictions: it is unlikely that a global brand owner does not want his competitor to register their brands in his TLD. So a process needs to be put in place to verify eligibility requirements. Something we are quite good at …

AVC: Which brings me to my next question…. Do you separate out your services? For instance, can someone come to you just for assistance with their Sunrise period?

BL: Absolutely.

AVC: So I also provide consulting to TLD applicants, so in a sense we are competitors. But I don’t have any official competence in verifying trademarks. Could I come to you and say, Bart, we’re doing a Sunrise Period and we need to verify that the submitted trademarks are legitimate. Is that something you would do?

BL: Sure, no problem at all.

AVC: I suspect that I am not the only one who wouldn’t be able to do this without assistance. So you probably will have a pretty big customer base. Can you give a sense of what this would entail as a process, and what the costs might be? I’m sure you can’t quote a flat rate, but there are a lot of people out there trying to construct budgets, and from what I’ve seen this is a big unknown, so any hints would be helpful.

BL: What we have been looking into for quite some time now is to set up a workable system that meets the concerns of the community of trademark owners, as expressed by them in the context of the new gTLD process.

We have a huge database built from past experiences. This database contains tens of thousands of records of trademarks matched against domain names. We have verified each record against a set of criteria, such as: is it a word mark or is it a device mark, is there a special character in the trademark or not, etc. About 20 criteria in total.

So, one of the things we are thinking about is to offer future registries access to the database for free or for a symbolic amount. I cannot mention prices yet, since we are budgeting ourselves, but in any case, it will be low (or even zero).

We get our money from the registrars, who pass on a fee of X to the trademark owner. For this fee, we keep the record up to date for a year. This means: we are going to check on a monthly or bi-monthly basis whether our record is still in line with the official information on the trademark database. If it is not, we update our database, and provide a complete and up-to-date record set to the registrar.

AVC: So this goes beyond the Sunrise Period — you are effectively offering a trademark-watch service for registrars, correct?

BL: We offer various things in this respect: sunrise services, trademark watch and prosecution, portfolio audits, litigation and alternative dispute resolution, but what I am talking about here is sunrise services.

So how would it work? For instance, a company is going to apply for .XYZ. Its sunrise policy only allows companies with a presence in Latin America to apply. They only allow registered word marks, because they think (wrongfully, but OK) that device marks are risky. The trademark must be applied for before date X, and must be registered at the latest on date Y. They also do not allow special characters to be omitted, but they do allow special characters in a trademark to be transcribed.

If this is their sunrise policy, in a nutshell, I can provide them with the complete data set of trademarks that will qualify for this particular sunrise. All the registrar needs to do is activate the names. Sunrise in a blink of an eye …

AVC: Interesting. How do you handle common-law trademarks such as are found in the U.S. and British Commonwealth jurisdictions? Are those in your database as well?

BL: We have a process for determining those, yes. For instance, in the context of the .eu Sunrise, unregistered trademarks were included in the scope. There was a lot of debate on how these types of IP rights would be dealt with, but the solutions we offered have proven to be working.

AVC: That’s really great.

BL: Same for company names, trade names, business identifiers, personal names, etc. The whole lot. However, the point is that you need to set up the database only once, but you need to keep it up to date as well. With quite some inaccurate information contained in the official trademark databases, experience learns that this will be a real challenge. But I trust the team that is working on it: I am proud to have the right people with the right expertise on the ground to manage these processes.

AVC: Let’s suppose that you want to verify information outside the trademark arena. Let’s suppose you had a “city sunrise” where residents and local business will get first choice, after trademark holders. Could you assist with verifying residency?

BL: Absolutely. We will come over and ring door bells, if you want ;-)

AVC: One thing I didn’t understand. You said that you would charge registrars and pass along money to the trademark holders. How does that work?

BL: Well, the registrar “sponsors” the record in our database, and passes on our bill to the rightholders. So we invoice the registrar on an annual basis. The registrar invoices his client. It’s actually a bit like working as a registry. It will solve a lot of issues, I am sure.

AVC: Interesting. So you’re really constructing that mythical beast that registrars have been crying out for — a definitive list of trademarks to test registrations against.

BL: Exactly. It will be a risk- and error-free operation. Experience learns that errors in domain name applications can be a huge threat in the context of TLD sunrises. The system we are developing excludes that risk to a large extent.

Look at the .EU sunrise: there was a lot of criticism about how the sunrise process was managed, and this on the basis of the large number of rejections of domain name applications. But nobody actually questioned why these applications were rejected. Now, you must know that more than 50% of the domain name applications we received contained erroneous information. So the criticism can be summarized as: “I know I have made a mistake, but since you are not doing anything about it, it is your problem” …

Another example: we are currently working on the sunrise for .CO.NL, which includes some kind of grandfather for domain name registrations in .NL. So, basically, registrars just need to copy-paste WHOIS information. You cannot imagine how many mistakes are made….

AVC: Finally then: If someone wants to get in touch with you, what’s the best way?

BL: By email blieben @ laga.be or mobile: +32473910621

AVC: One last question, something I’m always interested in. How on earth did you get involved with this field of domain names? Does it still hold your interest? Why?

BL: I knew from the very beginning that this would be an area that would entail many legal pitfalls. Many IP fields are beaten tracks by lawyers, so if you want to stand out, you need to find an angle that nobody has seen. I have that with a number of things: valuation of IP rights, validation in the context of sunrise periods for domain names, transfer pricing aspects of IP (tax issues in general). So I am trying to stay away from the beaten track, and try to find new, innovative things.

AVC: Well you are certainly a valuable resource when it comes to Sunrise for domains. And I’m very interested in your database project; I think it holds real promise and I think we all look forward to hearing more.

BL: Good, I will keep you up to date. Always a pleasure talking to you.

AVC: The pleasure is mine. Have a great evening.

Tags: Bart Lieben, Laga, Deloitte, ICANN, new top-level domains, new TLDs, ICANN, Sunrise Period, trademark verification

Posted by Antony in: Domains, Guide to new TLDs