Originally posted August 16, 2013 by David J. Kappos on http://www.insidecounsel.com
This writing updates an earlier InsideCounsel article discussing the new gTLD system from a policy and strategic perspective.
In the new world of generic top-level domains (gTLDs)—the first of which are poised to launch by the end of the month—domain names will take on trademark significance for the first time in the history of the Internet. In a world where virtually any word—from a whole-industry description, to a company title, to the name of a specific branded product—may be subject to registration by anyone with the will and resources to apply, it is important for companies to be aware of new procedures and mechanisms in place to protect their intellectual property in the online space.
Background on top-level domains
The Internet Corporation for Assigned Names and Numbers (ICANN) is the nonprofit company contracted by the U.S. government responsible for coordinating activities necessary to the operation of the Internet’s underlying address book, the Domain Name System.
For many years, ICANN made available for registration only a handful of Top-Level Domains (TLDs), such as .com and .net. In the early 2000s, ICANN expanded the number of domains considerably to include .biz, .info, .name, etc. Then, in a major move commencing a further staged expansion that continues rolling out to this day, on January 12, 2012, ICANN began accepting applications to register nearly anything to the right of the “dot.”
Impact of the new generic top-level domains
As more and more businesses around the world joined the digital space, ICANN determined there was a need to expand the options available for domain names. And the new gTLDs provide some important positive opportunities. High on the list is the opportunity for new registries to police their participants, ensuring that the goods sold under those registries are genuine, that brands are represented in accordance with the law and best practice, and that participating businesses are themselves legitimate and willing and able to stand behind the products and services they provide over the Internet.
Of course, the proliferation of new gTLDs brings with it the downside of new opportunities for pirates and squatters to unfairly capitalize on the reputation and good will resulting from the investments of legitimate companies. ICANN has considered this negative potential and has put measures in place to address the potential for illegitimate registrations.
For one, the cost of registering a new gTLD to the right of the dot—$185,000 initially and $25,000 per year thereafter—is much higher than the nominal cost of registering an old-fashioned domain to the left of the dot. Other ICANN deterrence measures include a “trademark clearinghouse” (opened on March 26) to warn potential registrants and mark owners of an attempt to register a listed mark, “sunrise registrations” providing a 30-day window before opening a new gTLD to the public to allow a mark owner to register its mark first, and “uniform rapid suspensions” to allow mark owners to quickly and cost-effectively freeze infringing domain names where there is no genuine issue as to infringement and abuse taking place.
Current status of the gTLD program
ICANN announced at its July 14 to July 18, session that 1,092 new gTLDs have passed the initial evaluation process since the application window opened on January 12, 2012. These applicants will soon begin contracting with ICANN on a rolling basis to launch their new gTLDs, assuming there are no objections through the various intervention processes put in place by ICANN.
Among the new gLTDs are company-specific domains such as .intel and .gucci, industry-wide domains such as .wine and .luxury, and broadly applicable domains such as .fun and .repair. The Russian words for “online” and “website,” the Arabic word for “web” and the Chinese word for “game” will be the first gTLDs to launch—as early as this month—as ICANN announced at its July session that registry agreements for these domains have been signed.
The first major dispute over gTLDs also appears to have been resolved. ICANN’s Governmental Advisory Council has recommended rejection of the online retailer Amazon’s application for the .amazon domain in view of objections from Brazil, Argentina, Peru and Chile. These countries successfully argued that .amazon should be protected as a geographical name (clothing company Patagonia withdrew its application for .patagonia after a similar objection raised by Argentina).