IP Cases & Articles

Generic Top-Level Domain Rollout

After significant planning and lengthy application stages following its launch in 2011, the Internet Corporation for Assigned Names and Numbers’ (ICANN) New gTLD (generic top-level domain) Program has begun to introduce the first of the estimated 1400 new TLDs. This latest development is part of an ongoing process, which, due to its pioneering nature, is evolving as it unfolds.

Latest developments

Since 23 October 2013, ICANN has finally begun to delegate (or ‘activate’) the first new TLDs into the internet’s Root Zone. Examples of recently delegated TLDs include .VOTING, .COMMUNITY and .TOKYO. ICANN is expected to systematically delegate new TLDs at a rate of approximately 20 per week in the coming months.

Once in the internet’s Root Zone, it is at the discretion of the relevant registry to set the timetable for the release of the TLD to the public (including the Sunrise and Landrush periods described below) and the associated pricing structure for domain name acquisitions (it is expected that most registries will set considerably higher prices for purchases during the Sunrise period than when on general release).

Another recent development is the move by ICANN’s Trademark Clearinghouse (‘TMCH’), in December 2013, to allow rights owners who have registered their trade marks with the TMCH to decide to ‘opt in’ to receive continuing notifications via the Trademark Claims Service. This is an indefinite extension of the service beyond the initial proposed 60-day period. The notification service period had already been extended to be a mandatory 90-day period; however this new unlimited period comes, according to ICANN, in response to ‘market demand by IP holders for an open-ended notification solution.’

There has been much commentary surrounding the Trademark Claims Service, and this indefinite extension may attempt to curb concerns that the facility is inflexible and deficient.

As readers may be aware, registering trade marks with the TMCH provides an important two-limbed mechanism for rights protection. The TMCH acts as a centralised database of verified trade marks and allows access to the Sunrise and Trademark Claims services. The ‘Sunrise Period’ allows participants of the TMCH to apply for domain names using their verified mark together with the relevant TLD, before the TLD becomes available on a first-come-first-served basis to the general public. For example, if party A had registered the mark ‘ABC’ in the TMCH, during the Sunrise period for .BOOK, A could apply for ABC.BOOK. It is at the discretion of .BOOK’s registry to decide the length of the Sunrise period, as long as it is greater than 30 days. From reviewing those launched to date, it appears that registries are favouring a 60-day Sunrise period.

Registries may also opt to have a ‘Landrush Period’ after the Sunrise Period, which is open to the general public but on an auction basis.

The Trademark Claims Service is envisaged to provide notifications to TMCH participants if a domain name is registered that exactly matches their verified mark. Allowing this service to become indefinite intends to improve IP protection and comes at no additional cost. However, it remains contentious that notification will only occur after an identical mark has been registered, e.g. using the example above, A would be notified if another party registered ABC.BOOK but not ABCD.BOOK or ABC-RUBBISH.BOOK.

Another hot topic is the relaxing of ICANN’s prohibition against the entry of ‘dot’ marks in the TMCH. In December 2013, ICANN announced that such marks may now be permissible, so long as the dot signifies an abbreviation, punctuation or figurative part of a registered mark, e.g. ‘L.A.Gear,’ ‘JustDoIt’ (the sentence ‘just do it’), or ‘Deloitte.’ (where the mark itself includes the ‘dot’). However, marks that include a dot at the start of the mark or before what will be a new TLD extension are still not permitted entry, e.g. ‘.ICANN’ or ‘first.book.’

Future issues

In addition to the likely emergence of new business models and domain-name strategies by brand owners, it will be interesting to see how registries, search engines and consumers react to the New gTLD Program. One particular trend is the emergence of ‘blocking services’ that allow trade mark owners to block domain name registrations using their mark throughout a registry’s gTLD portfolio. Unlike the Trademark Claims Service, this may include the mark plus a keyword, although protection against each combination would be separately charged.

A number of key issues remain unclear, including the administration of disputes under the various new registries, the development of any standard pricing structures across the registries and what ICANN’s role will be in the ‘Internet Governance Ecosystem.’

Conclusion

It is important that, as an internet community, we continue to monitor the program as it develops and proactively deal with issues as they arise. This is particularly the case for brand owners. It will be some time until it is possible to review the impact of the New gTLD Program and see if it resulted in the revolution, or perhaps evolution, of the internet as we know it.

This article was originally published in, and is republished here with the permission of, the E-Commerce Law & Policy journal.

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