The number of UDRP claims a company files will help it qualify for a list of 100 brands that qualify for special protection in new gTLD launches.
Deloitte’s new brand list, expected to be published within a week, was created in response to ICANN’s call for a “globally protected marks list” or GPML, that new gTLDs can use in their sunrise periods.
The number of times a brand has been subject to a UDRP complaint is one of four criteria Deloitte is using for inclusion on the list.
.CO Internet, manager of the newly relaunched .co ccTLD, is already using the list in its sunrise period, referring to it as a “Specially Protected Marks” list.
Deloitte is more cautious, pointing out that while it was designed to fulfil some of the objectives of the ICANN GPML, it is not “the” GPML.
The company says: “the list published by Deloitte specifically intends to provide a fair view on which brands stand out in the safeguarding and enforcement of rights in the context of domain names.”
To make it onto the list, brands are assessed on these criteria: the web site’s ranking, the number of trademarks registered worldwide, whether the brand has participated in a previous sunrise, and how often the brand is cybersquatted.
For this last criterion: “Deloitte has reviewed in particular how many times a certain trademark has been invoked in the context of domain name dispute resolution proceedings, in particular in UDRP.”