Topic: Domain names
Who: The Internet Corporation for Assigned Names and Numbers (ICANN)
When: Coming in 2013 (possibly)
Where: Worldwide
Law stated as at: September 2013
What happened:
The process to expand of the number of generic top level domains (“gTLDs”) on the internet continues. This is a brief round-up of how the process is going and what brand owners need to know.
The story so far…
At present there are only 22 gTLDs (such as .com, .net, .org) in addition to a handful of country code top level domains (such as .co.uk, .de, .fr). The new regime, which will see a massive proliferation of gTLDs in 2013 and beyond, has allowed any private or public organisation which meets certain criteria to apply for a new gTLD which can comprise any combination of characters. These may be general terms such as .car or .shopping but can be brand-specific such as .audi or .asda.
Last year more than 1,900 applications for new generic Top Level Domains (“gTLDs”) were accepted by ICANN and successful applicants will become domain registry operators for an initial ten year period under registry agreements with ICANN. Some successful applicants will operate open registries and allow other parties to register second-level domains under them (for a fee), while some will maintain closed systems for use only by themselves or other businesses working in partnership with them.
The first application round closed in April 2012, and the first new gTLDs are expected to go live at some point in 2013, although the process has been beset by delays. The full list of applications and regular updates are available via ICANN’s website.
Recent developments
“closed” generic applications on hold
In late June ICANN announced that applications to run gTLDs as “closed” systems for the use only of the applicant or its affiliates were being put on hold indefinitely. This only applied to gTLDs that correspond to truly generic words (e.g.:.music, .cloud.). Applications for words that correspond to brands are still being processed. This decision was taken in response to comments made in the public consultation period to the effect that no single commercial entity should have the right to own and operate a gTLD that corresponds to a commonplace word without making that gTLD open to the public at large to register their own websites under the gTLD at the second level (e.g.: mywebpage.music).
It is presently unclear what will become of the applications currently on hold (or the hefty application fees paid).
Formal objections process
Panels of experts are now ruling on various objections filed against various of the applications for new gTLDS. Objections raised by the peoples of Patagonia, to the effect that a foreign commercial entity should not have control of a TLD that corresponds to that geographic area, lead to clothing brand Patagania, Inc withdrawing their application for .patagonia in July. There have also been indications that Amazon’s application for .amazon may be rejected following similar objections.
Objections by brand owners
A total of 69 objections were filed by brand owners who wanted to oppose applications which they felt infringed their trade mark or similar rights. Of the decisions that have been reported during July and August, the overwhelming majority indicate a propensity in favour of the gTLD applicant. In the main this seems to be because the gTLD applied for actually corresponds to a generic word. In circumstances in which that word is also the brand identity of a business, that business is likely to have been able to register only logos or very stylised versions of its name. This is often the case because where the brand name is possible not very distinctive, a trade mark office will not grant a monopoly over the mere word, although practice does vary globally. As such when comparing the mere word applied for as a gTLD to the logos and stylised trade marks relied upon, the panellists have been, on balance, favouring the applicant.
At least two legal rights objections have been reported as upheld. The application for .delmonte was made by a licensee of the Del Monte brand. The actual owners of the Del Monte brand successfully objected. The facts of the case were reasonably complex however while the applicant had certain rights under their licence, the panellists took the view that consumers would assume the gTLD was associated with the owner of the Del Monte brand.
The other successful legal challenge was brought by The DirectTV Group (a US digital television service provider) against an application by Dish DBS (a US competitor) to register .direct as a gTLD. This was a more straightforward case, with the objector owning a family of DIRECTTV and DIRECT trade marks such that the panellists felt that consumers could be confused into thinking that websites hosted under the .direct gTLD were connected to DirectTV’s business.
Opportunities for brand owners
Many of the generic terms applied for as gTLDs correspond to consumer products and services (e.g.: .book, .bank, .music), so there may be opportunities for brand owners to apply for domain names that incorporate their brand identity in the second level in the normal way, but end with a specific product or service in the top level (for example: osborneclarke.law, bbc.news or yourcompany’sname.marketing).
In addition some gTLDs will present brand owners with an opportunity to present a particular message to the public simply by registering a second level domain under the name. Registering and using a second level domain under gTLDs which correspond to words to which consumers respond favourably may be worth considering as part of an overall brand strategy, such as brandname.health, brandname.home, or brandname.luxury.
Trademark Clearinghouse is now open
Many brand owners are concerned that the proliferation of new gTLDs means that there is more scope for individuals or other businesses snapping up web domains that correspond to their brand terms (so called cybersquatting). To assist, ICAAN has set up the Trademark Clearinghouse. Brand owners are now able to list their registered trade marks in the Clearinghouse, at a cost of $150 per mark per year (although discounts are available for prepayments and for bulk users such as trade mark agents).
Trade marks can be added to the Clearinghouse online here.
The operators of new gTLDs will be obliged to make refer to the Clearinghouse before their new gTLD goes live. They will then have to offer a right of first refusal to businesses who list their marks in the Clearinghouse for any second-level domains that correspond to trade marks in the Clearinghouse (i.e. during a so-called “Sunrise Period”).
Additionally, once the gTLD is open to the public, any applicant for a second-level domain which exactly matches a trade mark in the Clearinghouse will be notified of the brand owner’s trade mark rights.
These notices would only be given if the application is made within the first 90 days of operation of the new gTLD.
There is no mechanism for brand owners to prevent registration of second level domains which correspond to their trade marks and they would only be notified once a second-level domain corresponding exactly to one of their listed trade marks has been registered.
In addition to the Trademark Clearinghouse and the normal domain name dispute resolution procedures, a Uniform Rapid Suspension procedure will be put in place with the intention of providing an efficient and inexpensive mechanism for dealing with obvious instances of cybersquatting.
Why this matters:
This development continues to present real challenges to brand owners, as well as opportunities. Below is a list of five things that businesses should do in relation to the new gTLD applications.
1. Review the published list of applications. Consider whether there are any gTLDs under which you might like to apply for a second level domain either because they correspond to a relevant product, service or marketing message. Similarly, identify any gTLDs that you want to keep a close eye on to ensure that third parties are not abusively registering your brand name(s) as a second level.
2. Consider using the Trademark Clearinghouse. The proposed Clearinghouse is not without its flaws, but it may be worth lodging at least a small portfolio of registered trade marks in the Clearinghouse, both as a deterrent to would-be cybersquatters and to afford you the right of first refusal on any second-level domains under the new system.
3. Ensure your own trade mark portfolio is in good shape. Make sure that any trade marks which you may wish to record in the Trademark Clearinghouse are registered and properly renewed.
4. Monitor the roll-out and use of the new gTLDs. There may be lessons to be learned from how this first batch of gTLD applicants fare throughout the application process and in their use of new gTLDs which are granted. The next round of applications may not come for a while, but be prepared to apply if you think your business can benefit from owning a gTLD. Similarly, lessons will likely be learned from how brand owners respond to the opportunities and risks arising at as result of the proliferation of potential second level domains under the new gTLDs.
