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PROTECTING BRANDS


On January 12, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) will begin accepting applications for new gTLDs. gTLD stands for ‘generic top-level domain name’—the letters to the right of the ‘dot’ in a URL (website address), as in .com. For many Internet users .com is the most common and recognisable gTLD and for nearly two decades .com has commanded a premium position for consumers and brand owners alike. In business terms two decades can be regarded as a long time; when applied to the Internet, it’s an eternity.


For some people, the idea of bringing new TLDs to the market represents a monumental positive shiſt in how the Internet will operate. ICANN’s president and chief executive officer effusively praised the development as one that will “unleash global human imagination … to better serve all of mankind”. Conversely, in November 2011, a coalition of large corporate brand interests criticised the new gTLD programme proposal for its “deeply flawed justification, excessive cost and harm to brand owners, likelihood of predatory cyber harm to consumers, and lack of stakeholder consensus, a core requirement of its commitment to the US Department of Commerce”.


Clearly, there are strong opinions on both sides of the argument. In the end, it is unlikely that these eleventh hour objections will scuttle the launch of the gTLDs. Nevertheless, the objections have some merit because, in the authors’ opinion, the new programme is not flawless.


Will the gTLD programme unleash a new era of cybersquatting?


Te short answer is: not at the gTLD level, but possibly for second-level domains. With an application fee of $185,000, it is unlikely that a third party will seek to register a brand owner’s name. While ‘cybersquatting’ exists, the cybersquatter is not likely to have access to the capital to cover the necessary application and legal fees. Te gTLD application is a complex technical document with hundreds of pages of requirements.


Unlike the registration of a domain name, an applicant for a new gTLD is applying to operate a registry business and is, therefore, subject to extensive scrutiny. Applicants are required to demonstrate the necessary technical expertise to operate a registry, and show proof of actual operational compliance


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before delegation of the gTLD. Te evaluation criteria are robust, and the successful applicant must be approved by independent panels. Te successful applicant will need competent counsel to assist with the gTLD process.


Applicants will be vetted by the following independent panels:


Te String Similarity Panel—Determines whether a proposed gTLD is confusingly similar to a reserved word, and existing gTLD, or an applied-for gTLD (‘string’ refers to the alphanumeric content of a domain name);


Te DNS Stability Panel—Evaluates whether the applied-for string could adversely affect the security or stability of the domain name system (DNS);


Te Geographic Names Panel—Assesses whether the gTLD represents a geographic name (if a geographic area is implicated then the applicant will be required to provide verification from the relevant/affected government or public authority);


Te Technical Evaluation Panel—Determines whether the applicant is technically and operationally capable of operating a gTLD registry; and


Te Financial Evaluation Panel—Reviews the business, financial and organisational feasibility of the applicant.


In addition to the rigours and cost of the application, all applications will be subject to a challenge by trademark/brand owners.


Aſter the close of the application submission period, ICANN will post non-confidential portions of the new gTLD applications to its website. Similar to the publication of trademark applications before final approval, the gTLDs will be published for opposition. It is contemplated that the opposition period will be open for approximately seven months—sufficient time for trademark/brand owners to evaluate the applications and move to protect their interests.


During the opposition period, the brand or trademark owner may file a claim for dispute resolution, to be administered by existing dispute resolution providers, such as the World Intellectual Property Organization (WIPO) and the National Arbitration Forum (NAF). For claims involving string confusion objections, such claims will be handled by the International


Centre for Dispute Resolution and will be limited to existing TLD operators or new gTLD applicants that may be harmed by the registration. An existing legal rights objection procedure is open to trademark and brand owners who may be concerned about potentially infringing gTLDs. Legal rights objections will be handled by WIPO with costs that, in many cases, will be comparable to existing fees to resolve Uniform Dispute Resolution Policy (UDRP) claims.


Second-level domain rights protection: the left of the dot


Pre-domain registration, trademark owners have certain rights. ICANN has integrated two provisions to assist trademark owners seeking to protect their brands in the gTLD second-level domain registration process: the Trademark Claims Service (TCS) and the so-called ‘sunrise’ provisions. Under the TCS, for a defined period of time (at least the first 60 days of a gTLD launch) a trademark clearinghouse will provide notice to registrants whose prospective second-level domain matches a mark in the clearinghouse. Te owners of the corresponding trademarks will also be notified of the match. While the TCS is not a perfect system, when coupled with the mandatory sunrise provisions, the likelihood of widespread infringing registrations of second- level domains will be greatly diminished.


Under the sunrise provisions, for at least 30 days before the public launch period for a new gTLD, a trademark holder that is registered in the clearinghouse may pre-register domain names that include its mark.


Te use of the clearinghouse and the sunrise provisions have been applied to other gTLDs, most recently through ICM Registry, the registry of the .xxx TLD. Because the ICM sunrise just ‘set,’ it remains to be seen how effective the ICM process will be at protecting trademark and brand owners. However, ICM’s process was highly scrutinised and followed by brand owners and, therefore, it should provide a good measure for how the new process will proceed for other gTLDs.


Aſter the initial domain registration period and the close of the sunrise, trademark owners will be able to invoke the UDRP as well as the new Uniform Rapid Suspension (URS) in order to


Trademarks Brands and the Internet Volume 1, Issue 1 53


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