United States: Itís A BRAND New World: Update On ICANNís Expanded gTLD Program

Last Updated: February 11 2013
Article by Brad R. Newberg and Judith L. Harris

You have likely heard by now that the Internet is about to get substantially bigger and more complex, with potentially treacherous consequences for brand owners. This past fall, we wrote a† chapter covering this issue in Navigating ICANN's New Rules Regarding Generic Top-Level Domain Names. This update is to let you know what is currently going on with the new gTLD program, and to help you prepare to meet the inevitable challenges that will arise.

It is absolutely crucial that your company have a strategy in place to protect its brands before the upcoming launch, which is expected to commence over the next few months. Reed Smith attorneys have significant experience in this area, and can help you prepare for this momentous change in an already complicated eco-system.

Internet users currently operate in a web environment of 22 generic top-level domains (gTLD), such as, .com, .net, .org, and .jobs. ICANN, the entity established to oversee operation of the Internet, has now created a new gTLD program, which will usher in well over 1,000 new gTLDs, such as .music, .hotel, .book, .buy, and even .sucks. The first group of new gTLDs is set to launch in spring 2013 and the rest will come quickly thereafter, so it is an immediate concern. This launch will likely spawn massive consumer confusion and brand fraud, especially for companies that do not have plans in place to protect themselves.

Reed Smith has been on the front lines of this issue, with attorneys writing client alerts and articles for major publications, giving seminars on this topic, attending meetings with the decision makers at ICANN, serving on committees in an attempt to help formulate protection mechanisms for trademark holders in the new system, and guiding clients through the process, whether they have applied for their own brand-related gTLDs or are just trying to protect their brands and marks.

ICANN's Proposed Trademark Protections

Unfortunately, because the ICANN process is dominated by those who seek to profit from the new gTLD program, very few trademark protections will be available in the new system, and those that will be offered are not likely to be adequate. Nonetheless, it is very important that you know how these protections will operate and that you have a strategy in place regarding how best to use them, even if their benefit is limited.

The three main protections (all of which require payments by the trademark owner) that are currently tied to the launch of the new system are:

  1. The "Trademark Clearinghouse" (TMCH). The Trademark Clearinghouse is a list upon which you can put certain of your trademarks. Those marks will be eligible for a "claims service" whereby, for the first 60 days after a new gTLD is open to the public, a potential registrant who tries to register your exact mark as a domain name will get a warning that it may be in for a fight, and you will get notification if the potential registrant proceeds with the registration, so you can decide whether to take action.
  2. "Sunrise" Registrations. For each new gTLD launch, there will be a 30-day window at the beginning, before it opens to the public, during which you will be able to (pay the registry and) register your exact TMCH-listed trademark in that gTLD as a domain name, before a cybersquatter can get to it.
  3. "Uniform Rapid Suspension" (URS). This is supposed to be a system similar to the current Uniform Domain-Name Dispute-Resolution Policy (UDRP) (but with a stronger burden of proof), whereby trademark owners can quickly and cost effectively "freeze" infringing domain names when there is no genuine contestable issue as to the infringement and abuse that is taking place. However, unlike UDRP proceedings, prevailing in a URS proceeding will not result in the cancellation of the domain name or the transfer of the domain name to the trademark owner. Although this has been in the works for years, ICANN still does not know whether it can actually provide URS at the price points initially anticipated.

In addition, various applicants for gTLDs have individually committed to offer enhanced protections in the event that they are awarded the top level domain(s) for which they have applied. You will need to monitor this process with respect to the gTLDs that are of most interest to your brand(s), so that once gTLDs are awarded, you will be ready to avail yourself of any additional protections offered, over and above the minimum required by ICANN.

Even though the benefits of the expected trademark protections are limited, you need to know how they operate and have a strategy in place to protect your marks before the launch of any new gTLDs, so that you can choose the marks that will go on the TMCH, and have policies in place regarding how you will enforce against infringers. This is especially true since the claims service, offered through the TMCH, expires 60 days after the opening of each gTLD to the public for the registration of second level domain names. Trademark holders can be sure that the opportunities for cybersquatters and typosquatters in this new space will exponentially increase beyond even the alarming amount of abuse that currently exists. Companies need to be focused and vigilant to ensure brand protection.

At Reed Smith, we have been working with clients night and day to help them make it through this process. We have also been at the forefront of the fight to try to convince ICANN that additional protections are needed to guard against consumer fraud and trademark abuse.

Limited Preventative Registration: Public Comment Period

Recently, ICANN asked for public comments on some of these proposed additional Rights Protection Mechanisms, the main one being a "Limited Preventative Registration" (LPR). The LPR creates a framework that provides appropriate safeguards for registrants with a legitimate right or interest in a particular domain name, but also enables trademark owners to prevent registration of their marks as domain names across a portion or all of the new gTLDs, upon payment of a reasonable fee, rather than having to apply and pay for protection separately to a multitude of registries in each gTLD's Sunrise period. You may have engaged in a similar process when .XXX was launched.

Reed Smith has helped clients draft comments illuminating shortcomings in the current Rights Protection Mechanisms, and suggesting possible enhancements such as the LPR. The deadline for the first wave of comments on this and other ideas was January 15, 2013, but there is a second window for reply comments, which is open now and closes February 5, 2013. All comments can be entered and viewed on the Trademark Clearinghouse page on ICANN's website.

Please let us know if we can help make your voice heard or if you would like a detailed explanation of what the various rights-protection proposals entail.

Other Ways in Which Reed Smith Can Help You Navigate This BRAND New World

Reed Smith attorneys are ready to help you navigate this rapidly unfolding expansion of the Internet eco-system in many other ways. If you are an applicant, we can help you best position yourself or your company to be awarded the gTLD(s) for which you have applied, by assisting with any follow-up questions from those who are in the process of evaluating applications, and by working with you to develop strategies to resolve contention sets in ways that best serve your interests. Once you are awarded a gTLD, we can assist you with the registry contract you will need to sign and with registrar and registrant contracts. We can also connect you with vendors for services such as back-office support.

As the new gTLDs start to launch, Reed Smith can help with many other issues, in addition to brand protection strategies. The Federal Trade Commission has made clear, for example, that antitrust, in addition to consumer protection laws, will apply to the operation of new gTLDs. So, if you will be operating an open generic TLD, you could find yourself on the wrong side of competition laws if you run your registry in a manner that disadvantages your competitors. Similarly, if you are not operating a registry, but are being harmed by the way in which a competitor or other registry is operating its gTLD, legal redress might be available. We can help you comply with the law and ensure that your competitors do, too, once ICANN's new program is operational.

There will also be a time not far down the road when the success of the new program will be evaluated and public comment will again be sought. If the benefits of the program are deemed to have exceeded its costs, then there will be a second application round, during which those who stayed on the sidelines during the initial round may opt to participate, and those who did participate initially may choose to expand their collections of new top-level domains. Whether you see the potential to make this expansion work for you or whether you fear the chaos it will bring, Reed Smith can help you plan an appropriate strategy to best find your way in the "brand" new world that is upon us.

†Footnote

1 By way of example, among domain names in many other gTLDs, Reed Smith will have to worry whether someone will take reedsmith.law, reedsmith.lawyer, reedsmith.legal, and even reedsmith.inc.

This article is presented for informational purposes only and is not intended to constitute legal advice.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Brad R. Newberg
 
In association with
Related Video
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
Accounting and Audit
Anti-trust/Competition Law
Consumer Protection
Corporate/Commercial Law
Criminal Law
Employment and HR
Energy and Natural Resources
Environment
Family and Matrimonial
Finance and Banking
Food, Drugs, Healthcare, Life Sciences
Government, Public Sector
Immigration
Insolvency/Bankruptcy, Re-structuring
Insurance
Intellectual Property
International Law
Law Practice Management
Litigation, Mediation & Arbitration
Media, Telecoms, IT, Entertainment
Privacy
Real Estate and Construction
Strategy
Tax
Transport
Wealth Management
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.comís content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltdís services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) Ė meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with ďno disclosureĒ in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a userís hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friendís name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our usersí information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a userís personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that userís personal data provided to us. This can usually be done at the ďYour ProfileĒ page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.