Top Level Domain Names - Archive
This page features past articles and news alerts regarding ICANN's new generic top level domain (gTLD) programs. For our latest article, please visit Top Level Domain Names.
New gTLD Articles1. Application Filing Phase (closed May 30, 2012)
2. Evaluation Phase (in progress)
3. New gTLD Roll-out
New Top Level Domain Names — What’s in a name?
“What’s in a name? That which we call a rose, by any other name would smell as sweet.”
Romeo & Juliet (Act II, Scene ii) by William Shakespeare
What’s in a [Dot] Name?
A name may not be all that important in matters of the heart, but for many businesses, brand equity is everything. According to one report, the number one brand in the world in 2011 was Apple, valued at over 153 million dollars.1 Having the right domain name is a key element of building and maintaining a successful brand. In fact, it's difficult to think of a successful brand owner that does not own the matching .com domain name.
Soon, it will be possible to own and operate a domain name with any word or brand to the right of the "dot" – so long as the fees are paid and the application clears the requisite administrative hurdles. Many of us are wondering whether the world's top brands will soon be launching new "generic top level domains" ("gTLDs") that match their core brands, such as .Apple, .Google, .Microsoft, .Amazon. Or will these top brand owners choose to rely on the .com gTLD as the gold standard for a commercial presence online?
On January 12, 2012, the Internet Corporation for Assigned Names and Numbers, ("ICANN") opened up the domain name registry options to offer an application filing period for purchasing designer top level domain names. Until April 12, 2012, any corporation, organization or institution can apply to purchase a novel top level domain name.
What Does it Mean?
No longer will brand owners be restricted to .com, .net, .org and the like. This freeing of the gTLD space opens the door to registration of domain names that are also trademarks, such as (.ibm, .microsoft, or .nike) or domains that are generic terms like .airfare, .donut or .computer. It will also be possible to register non-English characters as .gTLDs – these are called "internationalized domain names," or IDNs. In sum, the current landscape of only 22 gTLDs is about to change dramatically and hundreds of new gTLDs may be launching in the next year.
Obviously, this new program creates the potential for businesses to gain strategic advantages over their competitors and it may open the door to previously unavailable business models. And, though time will tell, it may also have the potential for an unprecedented number of trademark disputes.
Many corporate leaders are shaking their heads over this program and wondering whether to ignore it and take a "wait and see" approach, or join the land rush for new gTLDs. Unfortunately, no one knows when there will be another opportunity to purchase a designer gTLD, and ICANN refuses to disclose its plans, if there are any plans, for another round of applications.
Some companies are electing to file applications for house marks now, rather than take the risk of missing out while waiting for a second application period that may never come. Some companies will choose to apply for their brands in order to prevent another company, which may have trademark rights in the same brand in another industry or in another country, to control the gTLD matching that brand.
Other companies plan to build new businesses on generic terms to the right of the dot. For example, if a company buys .donuts, that company will operate and control the Registry and will therefore control who gets to use domain names ending with .donuts. What are some of the business and IP implications of this? If Dad's Donuts wants to buy Dads.donuts, the owner of the .donuts gTLD is not required to sell that second level domain to Dad's. The owner of .donuts could, however, decide to allow Mom's Donuts, a direct competitor of Dad's, to buy the Dads.donuts name or could sell it to another opportunist seeking to sell the domain to Dad's, Mom's or Junior's Donuts. The owner of .donuts may be a donut maker itself and choose to use all the domain names ending with .donuts for its business and not allow any other donut maker to have any domain name ending with .donuts. Obviously, this has business implications for all trademark owners.
The Details: Applying for a gTLD and Monitoring Others' Applications
Before applying for a gTLD, applicants must first register with ICANN by March 29, 2012. After registration, the completed application must be submitted to ICANN by April 12, 2012. The application filing fee is $185,000 and certain other financial and technical criteria must be met to establish that the applicant is financially and technically capable of responsibly running a domain name Registry. The application is lengthy and will take some time, and likely assistance from experts in the industry, to prepare for submission to ICANN. For that reason, applicants are encouraged to initiate the process as early as possible.
In addition to the high application fee and ongoing registry operating costs, applicants must demonstrate sufficient financial, technical and operational depth to keep the registry fully operational. Running a Registry requires employing or partnering with highly skilled technical operators and complying with strict rules and obligations in the Registry Agreement.
After the application window closes on April 12, ICANN will publish the non-confidential sections of the applications for public review and comment. A Trademark Clearinghouse will be established in the Fall of 2012 so that trademark owners will have an opportunity to register their marks as barriers to new gTLD applications. Stay tuned: a service provider for the Clearinghouse has not yet been selected and the rules and costs governing the process have not yet been established.
Protecting Your Brand
There are a couple of ways to protect your business and brand with this new program. One: consider applying to buy a specialized domain name related to your business or your brands. Two: monitor the new applications and consider filing objections to applications for gTLDs that encroach upon your trademark rights or may cause confusion with your business in the marketplace. Three: submit key marks to the Trademark Clearinghouse (once established) to make sure your marks are protected against second level domains in the new gTLDs (i.e. terms to the left of the dot). Four: file complaints under the ICANN "rights protection mechanisms" against gTLD Registries operating domains at the top level or second level in an infringing manner.
Objecting to An Application
Some of the details for protecting trademarks in the new gTLDs rollout have been announced. According to ICANN, a trademark owner can object to a third party’s application for a gTLD infringing its trademark. The objection must be filed within 7 months after ICANN posts the application on its website. ICANN projects the applications will be posted starting soon after the close of the application period. Objections can be made based on the trademark owners’ registration or on common law use of the mark.
Getting to .Launch
If, after all hurdles are cleared, and the application is approved, the applicant will enter into a 10 year renewable Registry Agreement with ICANN. There is also a registry provider fee the amount of which will depend on transaction volume, and a $25,000 minimum annual ICANN registry fee. Some estimates project the total application process for lucky applicants will cost between $500,000 and $1,000,000 in the first year, an addition to the ongoing costs and risks of running a registry. Remember: regardless of the investment, there are no guarantees that an application for a new gTLDs will be accepted. While the rewards are yet uncertain, one thing is for sure; the costs and risks in buying and operating a designer gTLD are high in the short term as well as in the long term.
Although moving steadily forward, the launch of the gTLD program has spawned a great deal of skepticism and political jousting. Although many companies have accepted the coming change – and some are welcoming it – still other corporations are joining forces to try to get lawmakers to stop the program. The U.S. Department of Commerce has even officially expressed its concern over the impact of this program on IP rights holders. That being said, it appears that unless the Courts get involved, ICANN will continue pressing forward with the program as scheduled. The only question remaining for you to decide: Will you pursue your [DOT] name?
1 See BrandZ, Top 100 Most Valuable Global Brands, http://www.millwardbrown.com/libraries/optimor_brandz_files/2011_brandz_top100_chart.sflb.aspx; In contrast to this report, Interbrand awards the top brand spot to Coca Cola at a value of $71,861 million. See: http://www.interbrand.com/en/best-global-brands/best-global-brands-2008/best-global-brands-2011.aspx
New "Top Level Domain Names" Application Process Alerts
May 29, 2012 — ICANN plans to reveal the list of 1900+ new gTLD applications on June 13, 2012, at which time the clock will start ticking for comments and formal objections. See: http://newgtlds.icann.org/en/announcements-and-media/announcement-29may12-en and http://newgtlds.icann.org/en/announcements-and-media/announcement-3-30may12-en.
May 8, 2012 — ICANN will re-open the window for submission of applications of new gTLDs from May 22, 2012 to May 30, 2012, now that technical and security issues have been worked through. See: http://www.icann.org/en/news/announcements/announcement-08may12-en.htm and http://www.icann.org/en/news/announcements/announcement-09may12-en.htm.
April 12, 2012 — ICANN extended the window for submission of applications of new gTLDs from April 12, 2012 to April 20, 2012 citing technical "glitches" in the application system. See: http://newgtlds.icann.org/en/announcements-and-media/announcement-12apr12-en and http://newgtlds.icann.org/en/announcements-and-media/announcement-2-12apr12-en.
Your Turn: New gTLD Applications Open for Comment and Objection
“When to object and how to object? Those are now the questions.”
On June 13, 2012, the Internet Corporation For Assigned Names and Numbers (ICANN) posted the list of 1930 applications by 1155 applicants hoping to operate 1409 different new generic top level domains (gTLDs) on its Application Results page. Not all of these domains will be available for registration in the near future. They first must pass evaluation, survive any objections and, in the case of multiple applicants for the same gTLD, emerge the sole winner through negotiation or auction. Owners of trademarks and other legal rights should review the list of applications and start becoming familiar with the procedures for comment and objection.
Applicants currently face considerable uncertainty about when they might begin operating a new gTLD registry. ICANN will be dividing the applications into batches of approximately 500 applications each, with the intention of processing them one batch at a time. ICANN has informed applicants that no more than 1,000 new gTLDs can be awarded (“delegated”) in the first year, so being processed in the first or second batch could provide a decisive time-to-market advantage: new gTLD fatigue is sure to set in after hundreds of launches. This could have a significant impact on the viability of the new gTLDs.
For everyone else, the timeline is clearer. Comments on applications, and formal objections, are due as follows:
Application Comments: August 12, 2012
Formal Objections: January 13, 2013 (estimated)
In its initial evaluation, ICANN will score each application on numerous criteria, ranging from technical competence to financial viability. The public is invited to submit comments for consideration in this process. Some criteria relevant to Trademark owners include the following:
- Compliance with requirements for Rights Protection Mechanisms. Each applicant must present a credible plan for implementing the Uniform Domain Name Dispute Resolution Policy (UDRP), the new Uniform Rapid Suspension (URS) system, and a startup registration period (“Sunrise” period) allowing trademark owners to jump to the head of the line for new domain registrations.
- Compliance with whois requirements. Each registry must operate a whois service that discloses the owner and owner contact information for each domain, which involves both a credible technical plan and sufficient resources.
Trademark owners concerned about cybersquatting may wish to review applications on these and other points and submit comments in gTLDs of particular interest. A good starting point would be ICANN's new Application Comment Forum.
ICANN has created four categories of objections. For trademark owners the most pertinent will be the Legal Rights Objection, but in some cases the Community Objection might also be relevant.
Legal Rights Objections. Owners of registered or unregistered trademarks may file objections to gTLDs they believe infringe their existing rights. The objection will be evaluated by a panel consisting of one or three experts, and administered by the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO).
The term “infringement” has a specified meaning in this process that appears to be broader and more amorphous than the traditional “likelihood of confusion” analysis. The three ways a new gTLD could infringe an existing trademark are: its potential use (1) “takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered” mark; or (2) “unjustifiably impairs the distinctive character or the reputation of the objector’s mark”; or (3) “otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark.” The blending of subjective notions of unfair competition and dilution with likelihood of confusion offers experts substantial latitude to block new gTLDs if they are so inclined.
Trademark owners should expect to pay fees of about $10,000 for a one expert panel, or about $23,000 for a three expert panel, to file an objection. If the objection is successful, WIPO will refund $8,000 or $20,000, respectively. The time required to assemble a persuasive objection will depend on the quantum of the evidence that can be brought to bear, the complexity of the argument, and the extent of investigation of the applicant.
For more information on the objection process, trademark owners can consult WIPO's Legal Rights Objections FAQ.
Community Objections. A new gTLD may explicitly or implicitly identify a particular “community,” and ICANN has allowed for the possibility that a substantial segment of the community might object to the application. The objection will be evaluated by a single expert appointed by the International Center of Expertise of the International Chamber of Commerce.
A community must show “a likelihood of material detriment to the rights or legitimate interests of a significant portion of the community.” For example, there might be evidence that the applicant does not intend to act in the interest of the community, or that its operation of the gTLD would cause economic or reputational damage to the community. In additional to social groups, professional societies may wish to take a close look at .cpa, .law, or other relevant applications.
The fees for resolution of community objections appear calculated to discourage frivolous complaints. On top of a nonrefundable filing fee of €5,000, both the objector and applicant must deposit funds sufficient to cover the estimated time of the expert at €450, as well as funds sufficient to cover estimated expert expenses and ICC’s administrative expenses of up to €12,000. The winner’s deposit will be refunded. The time required to assemble a persuasive objection may vary widely, depending on the nature of the community and the corresponding complexity of showing a substantial level of objection, the complexity of the argument, and the extent of investigation of the applicant.
Potential objectors can check ICC's New gTLD Dispute Resolution page for further details.
We encourage you to review the list of applications, and identify any to which you might want to object, sooner rather than later, because considerable lead time may be involved in preparing an objection. Carr & Ferrell's Trademark Group looks forward to working with our clients on this next phase of their trademark protection strategies.