As we wrote about previously, the Internet Corporation for Assigned Names and Numbers (ICANN) accepted applications during the first part of 2012 for the next generation of Internet domains – customized extensions, known as generic top-level domains, or gTLDs. Until this time, gTLDs have been limited to the ICANN-approved gTLDs, including .com, .org, and .edu as well as several dozen country-coded gTLDs such as .US (United States), .CA (Canada), and .IE (Ireland). But for a few exceptions, this expansion allowed applicants to apply for nearly anything to the right of the "dot."
After a rocky application period, ICANN ended up receiving nearly 2,000 applications, far more than originally anticipated. ICANN is now sorting, reading, and determining who will be delegated a gTLD.
The gTLD application and award process already includes various dispute resolution processes, including an opportunity to oppose an applied-for gTLD before it is delegated and post-delegation dispute resolution procedures. Additionally, the existing Uniform Domain Name Dispute Resolution Policy will also apply to new gTLDs.
Further, in response to concerns that trademark owners faced an onerous burden of policing and monitoring potential infringement of second level domains, ICANN has promised to implement a Trademark Clearinghouse, a centralized database of verified data on registered trademarks. Although it has not yet been set up, the Clearinghouse is intended to minimize burdens on trademark owners by allowing them to submit, for a fee, their trademark information in one centralized source, rather than having to alert each new gTLD registry. In turn, new gTLD registries will be able to rely on the Clearinghouse to support rights protection mechanisms for the new gTLD space.
Although ICANN has spent years setting up a process that will provide various infrastructures, it is unclear if the procedures will be robust enough to handle the growing concerns. One of the challenges for brand owners and trademark practitioners, however, will be figuring out which "rights mechanism" is appropriate for various issues.
United States Congressmen wrote to ICANN's president in December requesting that ICANN prioritize consumer protection in their delegation process, such as conducting more comprehensive evaluations of consumers risks associated with each proposed new gTLD before delegating it.
In response to the December letter, ICANN emphasized that the gTLD program "includes robust processes to assure that the community as a whole – with particular opportunities for governments and rights holders – has the opportunity to raise objections that could lead to the rejection of applications" including user confusion, infringement of legal rights, and misappropriation of community names or labels.
On August 7, 2012, however, Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) and Ranking Member Chuck Grassley (R-Iowa), and House Judiciary Committee Chairman Lamar Smith (R-Texas) and Ranking Member John Conyers (D-Mich.) followed up with ICANN, noting that although there are dispute resolution processes in place, there is not enough public awareness of the new gTLD program to make these protections meaningful.
Under ICANN's current model for the Clearinghouse, trademark holders who submitted their marks would be notified only if a site using their exact mark was applied for within the first 60 days of launch of a gTLD. So, for example, while Morrison and Foerster might be notified if someone registered morrisonandfoester.law, the firm would not get notice if someone registered morrisonandfoersterlawfirm.law (because MoFo owns the trademark "Morrison & Foerster" but not the mark "Morrison and Foerster Law Firm").
Thus, the Congressmen argue, the protection mechanisms of the Trademark Clearinghouse could be more robust by extending the 60 day post-launch period that new registries are required to check second level domain registrations against the Trademark Clearinghouse database. They also propose allowing trademark holders to sign up for Clearinghouse notices of website registrations that contain their trademark in varied forms (instead of just the trademarked term).
Although it is unclear how ICANN will respond to the pressure to enact tougher protection mechanisms, the Congressmen's letter highlights the anxiety that many brand owners are facing. Protecting your brand on tomorrow's internet will require increased sophistication and participation. The new gTLD regime will also require brand owners to make cost-benefit decisions about how much time and money they are willing to spend to fend off cybersquatters and other rogue actors on the hundreds – if not thousand – of new gTLDs that are about to be unleashed.
Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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