Trademark owners are encouraged by the seemingly pro-trademark provisions in the Internet Corporation for Assigned Names and Numbers' plan for allocating new top-level domain names. High barriers to entry, mandatory rights protection mechanisms, and publicly available Whois registrant information all promise--at this early stage--to make cybersquatting an unattractive proposition in the new domains.
ICANN's new gTLD program, approved in June, is the subject of a detailed guidebook published Oct. 24. The guide sets out the application requirements, dispute resolution mechanisms, and requirements for ultimate registration.
Trademark owners in particular have long been skeptical of new gTLDs, and have questioned the need for an expanded namespace. ICANN has not spoken to those concerns directly, although its guide does provide some protections to trademark owners, and includes some provisions that lawyers say could be read as pro-trademark. The problem, at least at this early stage, is that the guidebook only sets out the basics. How ICANN will enforce the provisions there, and what enforcement will look like, is unknown.
Melinda Brown, vice president and general counsel of NameMedia, a domain brokering service, said that the possibility of new gTLDs presents a lot of opportunity for trademark owners, but tempered her optimism by noting that much is still unknown about how rights owners will be affected.
The application and review process largely puts the burden of proactive rights protection on the trademark owners themselves, Brown said, and when it comes to ascertaining what trademark owners will have to do to protect their rights and safeguard their brands, “it's a lot of speculation.”
Caroline Chicoine, a partner at Fredrickson & Byron in St. Louis, expressed similar sentiments.
“As it's written, the guide has a lot of promise for trademark owners,” Chicoine said. “But how ICANN will actually interpret and enforce the provisions in the guide remains to be seen.”
In the initial round, ICANN will accept gTLD applications from any “established corporation, organization or institution in good standing.”
Applicants must designate their TLDs as “open” or “community-based.”
An open TLD is one that anticipates third-party registrants--these TLDs will operate more like a .com in that their second-level domain will presumably be available for purchase by individuals and companies.
A community-based TLD, however, would be closed to a pre-selected body of registrants. Trademark owners looking to create a branded TLD would choose this option, and would control the entirety of the domain's content.
Should ICANN receive two applications for the same name, one open and one community-based, the community-based application would take priority.
Chicoine said that this preference to trademark owners was “promising.”
“Prioritizing a TLD that is needed and wanted by a defined group could have the effect of weeding out infringers,” Chicoine said.
The high price tag may have that effect, as well.
ICANN will assess a $185,000 application fee to advance an application through its initial evaluation phase.
The initial evaluation includes reviews of the applicant's technical, operational, and financial stability, and also includes a string review.
The string review, for which ICANN will employ a panel of “String Similarity Examiners,” will consider whether the applied-for name in the same or confusingly similar to another application or an existing TLD. It will also ask whether government approval is required for the string. Government approval will be required for the names of countries and certain other geographically or politically significant names.
Should the panel find a string conflict, the implicated applicants will have the opportunity to settle the dispute amongst themselves: or, if one applicant is a community-based applicant, that applicant can request, for an additional fee, a comparative evaluation. This is where trademark owners may find the process tipping in their favor.
In a comparative evaluation, the examiner will assess the two strings side by side, and will score each on a variety of factors. “[I]f there is a contention for strings, a claim to support a community by one party will be a reason to award priority to that application,” the guide says.
Not all conflicts will be resolved with string review, however. Not all trademark owners will want a TLD, and “the price is high enough that trademark owners will probably not register TLDs defensively,” Chicoine said.
If trademark owners are not themselves registrants, they would not be eligible to enter a string review. But they still would have reason to block another's registration of their brand.
For these owners, the objection process will be the next step.
Once an application is cleared through the initial evaluation phase, ICANN will publicly post the string on its Web site. Potential objectors will have a set window of time in which to file an objection, which must be accompanied by a non-refundable filing fee of anywhere from $1,000-$5,000.
There will be four grounds for objection:
• string confusion: that the string is confusingly similar to an existing TLD;
• violation of legal rights: that the string infringes rights that are recognized or enforceable under “generally accepted and internationally recognized principles of law”;
• morality and public order: that the string violates “generally accepted norms relating to morality and public order”; and
• community objection: that a “significant portion” of the community towards which the string is or seems targeted opposes the string.
Challenged applicants may either file a response (also subject to a filing fee), or withdraw the application.
If the applicant elects to file a response and initiate a dispute resolution proceeding, each party will be required to front the entire amount of the proceedings. This could range from $2,000 to $122,000. At conclusion, the winner's money will be refunded; the loser's will not.
ICANN has named a dispute resolution provider for each category of objections: the International Centre for Dispute Resolution will handle string confusion objections; the Arbitration and Mediation Center of the World Intellectual Property Organization will handle legal rights-based objections; and the International Chamber of Commerce will hear disputes based both on morality and public order and community objections.
“WIPO was a good choice, and the trademark community has confidence that objections will run smoothly under this model,” Chicoine said.
According to the guide, dispute resolution proceedings based on legal rights will center around whether the applied-for gTLD “takes unfair advantage of the distinctive character or the reputation of the objector's mark,” or if it otherwise creates an “impermissible likelihood of confusion” with the objector's mark. The panelists must consider eight non-exclusive factors when evaluating a possible legal right violation:
• whether the applied-for TLD is identical to or similar to the objector's existing mark;
• whether the objector's acquisition and use of rights in the mark has been bona fide;
• whether and to what extent the public could be expected to recognize the TLD as the objector's mark;
• the applicant's intent in applying for the TLD;
• whether the applicant has marks or other intellectual property rights in the string;
• whether the applicant has been commonly known by the name in the string; and
• whether the applicant's intended use of the TLD would create a likelihood of confusion with the objector's marks.
This dispute resolution process should favor bona fide trademark owners. It will be burdensome, however, and Chicoine and Brown both lamented the impetus for action it puts on trademark owners.
ICANN does not have any mechanism in place to alert trademark owners that applications have been received that may incorporate their brands.
“Trademark owners are going to have to watch the process, and time their objections to fall within the required window,” Chicoine said.
Monitoring for TLDs that are themselves brand names should be relatively simple for vigilant owners.
The list of approved applications will, of course, be published by ICANN.
The International Trademark Association will also be sending out alerts to member companies to inform them of names accepted and next steps, Chicoine said. Chicoine serves as vice chair of INTA's Internet Committee.
But as Brown said, TLDs that are not themselves trademarks could pose more complicated problems for brand owners and other domain name investors.
“The number of possible registrations is staggering, especially when considering second-level registrations,” Brown said.
In the .com-centered world, Brown said that her company would screen potential registrations and acquisitions against a database of marks registered at the U.S. Patent and Trademark Office.
There is no comparable database for international marks, she said. Also, screening not just the second-level name--that which is to the left of the dot--but also the TLD itself in combination with the second-level name will dramatically increase the time and money spent for both enforcement and evaluation.
“The birth of new gTLDs will definitely increase the screening and protective challenges for everyone,” Brown said.
ICANN will impose certain requirements on new registrants, which may--if they are enforced--ease some of trademark owners' concerns about enforcement within TLDs that are not, themselves, infringing.
ICANN's new gTLD registry agreement, which must be executed by all successful applicants, includes among its provisions a rights protection mechanism requirement and a Whois database requirement.
Rights protection mechanisms require registry operators--the successful applicants--to certify that they have some process in place to ensure that the domain names they issue do not conflict with the rights of others, particularly trademark owners.
Rights protection mechanisms are above and beyond the protections of the required Uniform Domain Name Dispute Resolution Policy. But how far above and beyond the UDRP these rights protection mechanisms must rise--and how strong the process must be--remains unknown.
“What we don't know is what, specifically, will be required, or what sorts of things will qualify as RPMs,” Chicoine said.
The draft agreement stipulates only that the “Registry Operator must specify a process and procedures for launch of the TLD and initial registration-related and ongoing protection of the legal rights of third parties.”
The required RPMs may act to bar most trademark infringing domain combinations, or they may not. It is impossible to tell at this point, but the thought at least is there.
The draft agreement will also require registrants to “provide public access to registration data” in a Whois database, but the agreement does not specify what data must be provided.
“There's a suggestion in the trademark community that the data display won't be required to be robust,” Chicoine said. “We can't tell based on the agreement what will be required.”
“Registration data” could be as simple as the registrar's name, or it could require specific contact information for each domain registrant.
Access to accurate registrant contact information is very important to trademark owners, Chicoine said. If a trademark owner believes that a domain name infringes its mark, it will need a means of alerting the registrant. Similarly, law enforcement may need an expeditious means of locating registrants in order to shut down phishing or other cyber crime Web sites.
Whether trademark owners will grow to love or loathe the expanded namespace remains to be seen. That changes are coming is inevitable, however, and trademark owners will have a role to play.
ICANN is accepting public comments on the guide online through Dec. 8, as well as at its public international meeting in Cairo Nov. 2-7.
All comments received will be taken into consideration by ICANN staff. A finalized version of the guide will be available sometime in early 2009, before ICANN opens the first application round.
The guide, “New gTLD Program: Draft Applicant Guidebook (Draft RFP)” is available at the Internet Corporation for Assigned Names and Numbers Web site, http://icann.org/en/topics/new-gtld-draft-rfp-24oct08-en.pdf
Further information on the guide's public comment forum, including instructions on how to submit a comment and links to comments already received, is available at the Internet Corporation for Assigned Names and Numbers Web site, http://icann.org/en/topics/new-gtld-comments-en.htm
The draft gTLD registry agreement is available at the Internet Corporation for Assigned Names and Numbers Web site, http://icann.org/en/topics/new-gtld-draft-agreement-24oct08-en.pdf
General information on the new gTLD program, including links to five explanatory memoranda on the application process, is available on the Internet Corporation for Assigned Names and Numbers Web site, http://icann.org/en/topics/new-gtld-program.htm
Paul Twomey's letter to the GAC is available at the Internet Corporation for Assigned Names and Numbers Web site, http://www.icann.org/correspondence/twomey-to-karklins-02oct08.pdf
Copyright 2008, The Bureau of National Affairs, Inc.