[author: Lisa Wang]
The Internet is about to change dramatically. Since Al Gore "invented" the World Wide Web, users have been used to using a limited number of top-level domains (TLD). A top-level domain is the end portion of a Web address (e.g. .com, .net, .org, .biz and .gov). A second-level domain name consists of the words in between www. and the TLD (e.g. apple in www.apple.com). Currently, there are 22 top-level domains (such as .org, .edu and .com) and more than 200 country-based domains (such as .us, .de or .eu). But, by this time next year, there may be more than a thousand in multiple categories such as place domains (e.g. .nyc, .tx, .taipei), keyword domains (e.g. .hotel, .watch, .apparel) or even brand domains (e.g. .apple, .gap, .walmart). It is important to protect your business from potential consumer confusion and infringement when these new TLDs go live next year.
The Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit corporation, manages most TLDs, Internet protocol addresses and basically anything that involves the URL itself. Last year, ICANN approved the creation of new TLDs called generic top-level domains (gTLD) to increase competition and choice in the World Wide Web. Any legal entity may apply to create and manage a gTLD.
Any organization that survives the application process and registers its chosen gTLD will have complete control over that gTLD. It can sell second-level domain names for a price that it chooses or it can ban public use altogether. For example, if United Airlines applied for and is approved for a .united gTLD, it will have complete control over that top-level domain. It can either sell a .united second-level domain name to United Healthcare (e.g. www.healthcare.united) OR it can refuse to let anyone else use that gTLD.
The first round application period ends April 12, 2012, and each application costs approximately $185,000 with annual administration fees of at least $25,000. ICANN believes that this high price will serve as a bar to entry for domain name squatters. Even with this high price tag, ICANN predicts there will be 1000-1500 new gTLDS by March 2013. The gTLDs can be in different languages and can be controlled by any organization (private or governmental). If you love salsa dancing, have $185,000 to spare and don’t mind running a registry, then you can apply to manage the .salsa gTLD.
So what should business owners do to protect their interests? On May 1, 2012, ICANN will publicly post all the gTLD applications it received. Third parties will then have seven months to file objections to the potential gTLDs. There are four bases for objections: string confusion (an existing TLD operator or gTLD applicant objects because the applied for gTLD is confusingly similar to another existing or proposed gTLD), limited public interest (the gTLD is contrary to generally accepted legal norms of morality and public order), community based (there is substantial opposition to the application from an established institution associated with a significant portion of the community that the gTLD targets, such as a coalition of watch makers objecting to Rolex controlling the .watch gTLD), and a legal rights objection.
The legal rights objection is the most relevant and useful objection for individual third parties. A legal rights objection can be raised by any party that has valid rights in the gTLD. The legal rights objection essentially allows trademark owners to oppose the new gTLD application on the basis that the applied for domain would infringe on the trademark owner’s existing rights. However, it costs $10,000 to file an objection, and if the gTLD applicant has a legitimate right to that gTLD, then the legal rights objection will fail.
If you do not object to a gTLD, you can still protect yourself and your business by recording your trademarks with ICANN’s Trademark Clearinghouse. The Trademark Clearinghouse will be up and running by October 2012 and it will maintain a database of registered trademarks that new gTLD registrars can connect to. It will essentially act as a central storage unit of trademark information. A trademark owner has three months to submit its trademarks to the Trademark Clearinghouse before the new gTLDs go live in early 2013.
Entering a registered trademark in the Clearinghouse offers business owners different types of protection. These trademark owners will have the opportunity to register a second-level domain name that constitutes their trademark for all the gTLDs before registration is available to the general public. This is called the Sunrise Period. The Sunrise Period basically allows eligible rights holders an early opportunity to register second-level domain names in all the new gTLDs. In addition, any entity attempting to register a second-level domain name that is already recorded in the Trademark Clearinghouse will be notified that its proposed second-level domain name consists of an existing trademark. Likewise, a trademark owner that registers its mark in the Trademark Clearinghouse will be notified of any possibly infringing second-level domain name registrations in all the gTLDs.
ICANN has also set up dispute resolution procedures. The Uniform Rapid Suspension System (URS) provides an expedited procedure for addressing clear cases of possible gTLD trademark infringement. The URS offers a streamlined process that is a quicker alternative to the existing procedure available for general domain name disputes.
While this may sound like convoluted technology and legal speak, it is important that business owners protect their rights before the roll out of a thousand new gTLDs in 2013. If you have the monetary means to object to a proposed gTLD, then be sure to check the ICANN website in May for a listing of all gTLD applications. Otherwise, make sure you register your trademarks (if you have any) with ICANN’s Trademark Clearinghouse in October 2012.
