ICANN’s New gTLD: Dot.Protect.Your.Trademark

By Meera El-Farhan

The Internet Corporation for Assigned Names and Numbers’ (ICANN) leap into the new generic Top-Level Domains (gTLDs) will introduce one of the largest unprecedented Internet developments. ICANN’s introduction of the New gTLDs is aimed to promote competition, add consumer choice, increase market differentiation and enhance the diversity pool of geographical and service providers.[1] The New gTLD program allows any private or public entity worldwide to apply for any custom-made gTLDs (example: .com or .yournewdomainname). Furthermore, gTLD strings will be capable of incorporating characters from other languages such as Mandarin Chinese.

Although many corporations and other organizations publicly announced their application to certain gTLDs -Google announcing its application to .google, .docs, .youtube, and .lol- ICANN has postponed sharing applicants’ information until “Reveal Day” (June 13, 2012). On Reveal Day ICANN will publicly post all TLD character strings entities have applied for; thus, triggering the processes of trademark “protection” mechanisms.

Background

The new gTLD is designed to virtually introduce an unlimited number of namespaces. Qualifying for a new gTLD requires an applicant to meet a fairly limited but stringent number of requirements. Once the applicant satisfies the financial requirements, such as the $185,000 fee, the applicant may apply to two types of gTLDs:

  1. Community-based: whereby the applicant must demonstrate its association and representation of a recognizable and defined community.

 

  1. Standard: applications that do not qualify for community-based usually fall under the standard category.

Additionally, as part of the application process, ICANN will conduct background screening to ensure an applicant passes specific criteria for criminal history and general business diligence.

Furthermore, to be mindful of potential trademark protection challenges, ICANN incorporated mechanisms within the gTLD system itself to ensure legal rights are protected. Prior to the introduction of the new gTLD, previous gTLD expansions allowed ICANN to better-prepare for the coming trademark challenges. Nevertheless, the appropriate balance between protecting trademark owners and other interests cannot be perfected. To assist ICANN with the coming new gTLD, the World Intellectual Property Organization identified the need for “preventative mechanisms;” prior solutions rather than post-remedies. To create such “preventative mechanisms,” ICANN formed the Implementation Recommendations Team (IRT), a team consisting of a diverse group of trademark experts. IRT’s recommendations formed the basis for trademark protections. IRT sought to provide a “tapestry of globally effective-solutions to some of the major overarching issues of trademark protection in connection with the introduction of new gTLDs.”[2] Additionally, many parties in the trademark community also had an influential impact on increasing the protection mechanisms for the new system.

 

Strategies for Trademark Protection

Although many individuals argue that ICANN’s trademark protection mechanisms tip in favor of trademark owners, such assertions do not translate into guaranteed trademark protections. Private and public entities must remain on the lookout to ensure that their trademark rights are not infringed. Accordingly, there are three approaches a trademark owner may take.

First, participating in ICANN’s processes. ICANN outlined the following three main protection processes within the application to provide various forums for interested groups to discuss, object, or resolve trademark protection issues: (1) Application Comment Process, (2) Program Feedback, and (3) Objection Period.  Trademark owners will likely find the Objection Period to be the most relevant to protecting their trademark rights. According to ICANN, grounds for filing an objection include (1) String Confusion Objections: objecting to strings likely to result in user confusion, (2) Legal Rights Objection: objecting to strings infringing on existing legal rights, (3) Public Interest Objection: objecting to strings contrary to international legal norms of morality and public order, (4) Community Objection: a significant portion of the community which the gTLD string is targeted at objecting to the gTLD. [3] Note that an objector does not need to be an applicant.

Second, utilizing the mechanisms ICANN will facilitate once the new gTLD program is operating:

  1. 1.      Trademark Clearinghouse: this repository organization accepts, authenticates, stores and pertains rights of trademark holders. Trademark holders are advised to register their trademarks to increase trademark protections. Additionally, the Clearinghouse will serve as an information bank enabling trademark owners to have access to a wide-variety of gTLD information.
  1. 2.      Uniform Dispute Resolution Policy (UDRP): UDRP is limited to clear cases of “bad-faith, abusive registration and use of some domain names.”[4] UDRP, being an out-of-court mechanism, applies to all gTLDs. Successful claims enable the transfer of the infringing domain name to the complainant’s control.
  1. 3.      Uniform Rapid Suspension system (URS): URS is also limited to clear cases of trademark infringements. Remedies under the URS are limited to temporary suspension of a domain name for the duration of the registration period.  Additionally, a successful complainant has the option of paying for one additional year at commercial rates.

Third, additional steps a trademark owner is recommended to take are: (1) applying for a second-level domain within a new gTLD registry, and (2) monitoring Reveal Day’s published gTLD strings to object to those in conflict with the entity’s trademarks.

Future Considerations and Challenges

Introducing the new gTLD will create a multitude of global challenges thus affecting organizations of all sizes. Entities are advised to avoid the wait-and-see strategy. Instead, entities should reassess risks associated with their trademarks continuously. Although the new gTLD’s risks might not be fully understood today, organizations are advised to plan, discuss, and carefully evaluate the implications of the new gTLDs as it unfolds itself worldwide.

 

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