The existing 12 generic top level domain names including of course the original “.com”, could balloon to 500 or more following ICANN’s “unleashing of the human imagination” by allowing, from January 2012, any organisation to apply to run its own gTLD. But just how many businesses are likely to take advantage asks Emily Devlin?
Topic: Domain names
Who: The Internet Corporation for Assigned Names and Numbers (ICANN)
When: June 2011
Law stated as at: June 2011
The new gTLD program will see an explosion in the number of domain names available. From 12 January 2012 "any established public or private organisation anywhere in the world" may apply to create and run its own generic top-level domain (gTLD). The Internet Corporation for Assigned Names and Numbers (ICANN) believes these steps will "unleash the global human imagination… allowing the domain name system to better serve all of mankind".
At present there are 22 gTLDs. This could increase by 500 after the first application period and could see domain addresses ending with almost any word in any language.
Rights owners may initially feel this is yet another excuse to extract money from them with a view to preventing inevitable Uniform Dispute Resolution Policy (UDRP) proceedings. However, this is far more than simply issuing a new domain name to the public: ICANN is, in fact, giving brand owners, amongst others, the opportunity to call the shots on their own, personalised, domain name suffix.
The new gTLD program is not for opportunistic cyber-squatters, the amateur or impecunious. Not only will applicants have to pay fees of $185,000, a series of "evaluation panels" will assess a variety of criteria, including: "string similarity"; "DNS suitability"; whether the gTLD represents a geographic name; "technical evaluation"; "financial evaluation"; and the ability to provide "registry services". In addition, applicants will be obliged to provide sunrise periods and an "intellectual property claims service" to protect trade mark rights.
Trade mark owners will note that, on application, there is no assessment on the basis of any earlier rights that exist, whether as a result of the applicant's own trade mark registrations, or those of a third party. Whilst it is not contemplating a notification system, ICANN will publish the list of all applications received once the submission period closes (12 April 2012) and an objection-based process will operate to allow rights owners to demonstrate a proposed gTLD will infringe their rights.
ICANN says it has "been working closely with the trade mark community" in developing the program. As a result it has proposed a "Trademark Clearinghouse", which will provide "a centralised location for storage and authentication of trade mark information to support the protection of relevant names". Further, a "uniform rapid suspension system" (URS) will, we are told, provide a faster and cheaper way to resolve clear cut cases of infringement, complementing the provisions of the UDRP.
Presumably, the URS has been proposed with the express purpose of pre-empting or deterring cyber-squatting on an industrial scale. Finally, there will be a trade mark "post delegation dispute resolution procedure" (PDDRP), pursuant to which a rights owner may complain if they believe a registry is actively engaging in infringing behaviour.
Why this matters:
On its face, this could be the most significant change to the domain name system since the .com domain was introduced 26 years ago. In reality, only the most global of brands are likely to avail themselves of a new gTLD, whether to ensure it does not end up in third party hands, or to operate a personalised suffix more appropriate for internal purposes. After all, it seems unlikely that a brand owner or organisation would wish to register a domain with a third party brand suffix, and vice versa.
It is probably the more generic of suffixes (such as .porn, .travel, .car, .health, .law) that will be the most valuable and doubtless the most hotly contested. The draft Applicant Guidebook does not clearly explain how multiple applications for the same suffix will be evaluated.
The most pressing question for brand-owners will be the extent to which they should secure their relevant domain names once the new registries are open for business. After all, the sheer number of potential domain names will make it unfeasible for even the most sophisticated of brands to secure their marks against the inevitable onslaught of cyber-squatters.
Further information can be found here or get in touch with your usual OC contact.