On June 13th 2012, the Internet Corporation for Assigned Names and Numbers (ICANN), revealed the applications for new generic Top-Level Domain names (gTLD) in a press release and conference. In his opening address, President and Chief Executive Officer of ICANN Rod Beckstrom stated that the “internet is about to change forever”, and that the gTLD project was going to create a “solid foundation” for internet competition as well as increase online innovation.

There are currently 22 gTLDs, including .com, .edu, .gov, .net, .org, and .info. By the end of the new gTLD application deadline, a reported 1930 applications had been received from 60 countries around the world, including:

- 911 from North America
- 675 from EU
- 303 from Asia-Pacific
- 24 from Latin America and the Caribbean, and
- 17 from Africa

The standard application cost was $185,000, in addition to other costs where ‘specialized process steps’ were applicable. ICANN considered these administrative costs as ‘breakeven’ although some speculate that the high price tag acted as a barrier to entry, leaving the future of the internet in the hands of a very wealthy few. Concerns were also raised regarding the geographical distribution of the applications – as North American applicants totaled 911, while applications from Africa totaled 17.

Of the 1930 applications, 231 gTLDs were applied for by more than one applicant, including ‘cloud’, ‘design’, ‘game’ and ‘eco’.  Google (under ‘Charleston Road Registry’) and Amazon applied  for 101 and 76 gTLDs, respectively.

The names released on Reveal Day have not yet been approved by ICANN. The gTLD evaluation procedure includes a review which will be conducted to ensure that the applicants will be able to afford and maintain the required infrastructure and service registry agreements.There is also a 9 to 20 month window where the application will undergo rigorous evaluation, which includes a 60 day comment period, as well as a 7 month objection period open to interested parties who can assert objection on one of 4 grounds which are published in Module 3 of the gTLD Applicant Guidebook:

“String Confusion Objection – The applied-for gTLD string is confusingly similar to an existing TLD or to another applied for gTLD string in the same round of applications.
Legal Rights Objection – The applied-for gTLD string infringes the existing legal rights of the objector.
Limited Public Interest Objection – The applied-for gTLD string is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law.
Community Objection – There is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string may be explicitly or implicitly targeted.”

Trademark holders can file a Legal Rights Objection which will then be assessed by a panel of experts in order to determine whether or not their trademark rights have been infringed. ICANN has also initiated three new gTLD “Rights Protection Mechanisms” (RPMs) – see below – which can be found in detail under Module 5 of the Applicant Guidebook:

“Trademark Clearinghouse

The Trademark Clearinghouse is a centralized database of verified data on registered (or court-validated, or “statute/treaty-protected”) trademarks. The Clearinghouse is intended to minimize burdens on bona fide trademark owners by allowing them to deposit, for a (yet-to-be-determined) fee, their trademark data with one centralized source, rather than with each new gTLD registry; new gTLD registries will be able to retrieve such centralized data from the Clearinghouse.

The Clearinghouse is not itself an RPM, but rather facilitates use of RPMs such as Sunrise registration periods (during which trademark owners can purchase domain names before the general public, usually for a premium fee), Trademark Claims services (notice to a prospective domain name registrant of a potential conflict between the domain name and an existing trademark, with a notice to the trademark owner if the domain name is registered following the registrant’s representation of non infringement), and URS proceedings (described below).

Uniform Rapid Suspension (URS)

The URS is intended to be a lighter, quicker complement to the existing UDRP. Like the UDRP, it is intended for clear-cut cases of trademark abuse. Under the URS, the only remedy which a panel may grant is the temporary suspension of a domain name for the duration of the registration period (which may be extended by the prevailing complainant for one year, at commercial rates). Initial URS timelines, at least from filing to a determination, are similar to those of the UDRP; also, the URS substantive criteria mirror those of the UDRP (but with a higher burden of proof for complainants, and additional registrant defenses).

It is important to note that, as adopted by ICANN, once a determination is rendered, a losing registrant has several appeal possibilities (from 30 days up to one year); trademark owners may consider this in deciding whether to use the URS or the UDRP, which provides a transfer, and thus does not carry a monitoring burden with it. (Either party may file a de novo appeal (for a fee) within 14 days.) There are also penalties for filing “abusive complaints” which may result in a ban on future URS filings.

Trademark Post-Delegation Dispute Resolution Procedure (PDDRP)

The PDDRP is an administrative (court alternative) option for trademark owners to file an objection against a registry whose “affirmative conduct” in its operation or use of its gTLD is alleged to cause or materially contribute to trademark abuse. In this way, the PDDRP is intended to act as a higher-level enforcement tool to assist ICANN compliance activities, where rights holders may not be able to continue to turn solely to lower-level multijurisdictional enforcement options in a vastly expanded DNS.

It is important to note that, as adopted by ICANN, the PDDRP involves a number of procedural layers, such as an administrative compliance review, appointment of a “threshold review panel,” an expert determination as to liability under the procedure (with implementation of any remedies at ICANN’s discretion), a possible de novo appeal (under the same process), and further appeal to arbitration under ICANN’s registry terms. Beyond this, any PDDRP remedy specifically excludes third-party-registered second-level infringing names (which may have been the basis for filing the PDDRP case), and requires specific bad-faith conduct including profit from encouraging infringement in addition to “the typical registration fee.” Also, attorney fees are available against complainants only.“

Preparing for the inevitable, on March 6, 2012, the World Intellectual Property Organization (WIPO) announced that it would roll out preemptive resources to help prevent the “abusive use of trademarks as gTLDs”. WIPO reports that trademark holders filed 2,764 cybersquatting cases concerning 4,781 domain names with the WIPO Arbitration and Mediation Center in 2011 alone. Applying the Uniform Dispute Resolution Policy (UDRP) procedures and jurisprudence, the WIPO Center  found evidence of cybersquatting in 88% of these cases. The UDRP has become the international standard procedure for trademark related, cybersquatting incidents.

The new gTLD project marks the third such expansion since the creation of ICANN in 1998 – the first expansion occurred in 2000, followed by the second in 2004. Most of the new gTLD applications are expected to be on the “shortest path” to going live in the first quarter of 2013.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

Posted in Trademarks, WIPO