Who: ICANN
When: 19 March 2014
Where: Worldwide
Law stated as at: 28 March 2014
What happened:
The expansion of the internet domain space continues. A new .UK country code Top Level Domain (“ccTLD”) will launch in June 2014.
In other news, businesses who filed competing applications to own and run new generic Top Level Domains (“gTLDs”) will enter into an auction process in June 2014 to ascertain who wins the right to run what are likely to become some of the most popular gTLDs.
.UK – new ccTLD
The launch of the .UK ccTLD is fast approaching; it is set for 10 June 2014. Nominet, the UK registrar which currently manages .CO.UK, .ORG.UK, .ME.UK, .NET.UK, .PLC.UK and .LTD.UK, will also manage this new ccTLD. All owners of an existing sub-domain under one of the .UK-suffixed domains already managed by Nominet will be given 5 years from 10 June 2014 to decide whether they want to register their existing domain names under the new .UK TLD. After that five year period, identical subdomains will be opened up under .UK for anyone to acquire.
In the event that one person holds a .CO.UK domain and another person holds the equivalent .ORG.UK domain (e.g. www.osborneclarke.co.uk and www.osborneclarke.org.uk), the .UK name will be offered in priority to the .CO.UK owner. Nominet have provided a rights look-up tool (which can be found here http://www.dotuklaunch.co.uk/rights-lookup-tool ) to assist customers in ascertaining who has the right to a particular subdomain under .UK.
Auctions of disputed gTLDs
The Internet Corporation for Assigned Names and Numbers (“ICANN”) is a non-profit organisation that oversees the Domain Name System that underpins the internet. Until recently, there was only a handful of gTLDs such as .COM, .NET, .BIZ, etc. along with a couple of hundred ccTLDs. In June 2012 ICANN received more than 1,900 applications from businesses who wanted to own new gTLDs.
Those new gTLDs could be any combination of letters or numbers. ICAAN has been delegating new gTLDs since October last year to successful applicants (see earlier Marketing Law article here http://www.marketinglaw.co.uk/media-and-ip/opportunities-and-risks-for-brand-owners-of-largest-ever-url-expansion ) and has since dished out a few gems in the gTLD world (.NYC, .CAREERS, .DATING and .TECHNOLOGY, for example).
Many of the currently undelegated gTLDs are the more contentious strings which are sought by multiple applicants, in part because of the prestige or monetary potential that they contain (.CLOUD, .WEDDING, .BOOK and .PORN, to name just a few).
In some instances, ICANN has been able to delegate these contentious strings either by the applicants having reached a voluntary agreement between themselves, or where the applicants have elected to use the Community Priority Evaluation Process offered by ICANN (further details here). However, where neither of these options is adopted, the contentious strings will be auctioned off amongst the original applicants and the proceeds from these auctions will be passed to the World Intellectual Property Organisation to fund its general activities. The first auction event is scheduled for 4 June 2014 and includes the auction of .ENERGY and .TECH (see the full list of auctions here).
Why this matters:
Companies with an existing domain name under a current .UK-suffixed domain should consider whether to register their website under the new shorter .UK ccTLD once it launches on 10 June 2014.
The registration process will be the same as registering a standard .CO.UK or .ORG.UK web address. The advantages to registering are, at the moment, limited to the prestige of owning a .UK domain.
As and when new gTLDs are delegated to specific registrars, companies should actively monitor which registrars are being assigned those gTLDs most relevant to their company (for example, law firms may want to monitor .LAW to make sure no-one abusively registers a subdomain corresponding to their trading name under that gTLD). The main reason for this monitoring and evaluation on a case by case basis is that each registrar is adopting a different level of trade mark related blocking and dispute resolution processes.
As a bare minimum all of the registrars must adopt the procedures and rules set out by the ICANN handbook (found here), but many are choosing to incorporate additional rules above and beyond this minimum, resulting in a patchwork of varying procedures amongst the registrars.
For example, if a company chooses to register its trade mark as a Domain Protected Mark with Donuts (one of the largest new registrars), this will be an effective block of that trade mark across all of Donut’s gTLDs for a period of 5 years and upwards.
From a trade mark perspective, companies are advised to begin monitoring the registration of potentially infringing registrations of gTLDs and sub-domains. Brand owners should monitor the regularly updated list of newly delegated gTLDs (available here) to identify any gTLDs of particular interest or concern.
Even where a business has no plans to commercially exploit a sub-domain under new gTLDs, consideration should be given as to whether or not they should acquire defensive registrations or, where available, block third parties from acquiring sub-domains which correspond to their trade marks. Brand owners should also seek legal advice from a trade mark specialist when considering whether to challenge a potentially abusive domain registration.
