From Dot-Com to Dot-Whatever

The organization that governs the Domain Name System, ICANN, voted late last month to launch the new application process for an unlimited number of new top-level domains (TLDs), despite lingering doubts and objections from trademark owners and others. ICANN's press release calls the development “historic” and “one of the biggest changes ever to the Internet's Domain Name System.” ICANN expects to begin accepting applications from January 2012 to April 2012.

How We Got Here

ICANN approved the idea of new top-level domains in 2008. The road to June 2011, via public comment and discussion of many versions of the “Draft Applicant Guidebook,” has been controversial.

Many believe that ICANN has failed to justify the need for new top-level domains. Others fear that an explosion of new registries will threaten Internet security. And perhaps of most interest to those in charge of their companies' trademarks, new domains will likely cause headaches and expense to brand owners who will face increased costs of defensive registrations, monitoring, and dealing with cybersquatting. Indeed, it is conceivable that most of the startup revenue of new TLDs will be funded by defensive registrations by trademark owners.

Some also felt that ICANN should have put a toe in the water with a pilot program first before opening up unlimited numbers of new applications.

The House Subcommittee on Intellectual Property, Competition and the Internet grilled ICANN in an oversight hearing as recently as May 4, expressing numerous concerns about the use of funds, trademarks, renewal of ICANN's contract to run the DNS, and other issues, and asked that ICANN postpone the June vote. (See the video of that hearing at http://judiciary.house.gov/hearings/hear_05022011.html.)

Critics of U.S. oversight may say that ICANN is not answerable only to U.S. policy, and other governments have expressed their concerns as well through the Government Advisory Committee (GAC), which considers ICANN's activities and policies as they relate to the concerns of governments. The GAC did not support the decision on June 20 to move forward with the application process, and ICANN acknowledged that it was not following certain advice of the GAC. On June 18, the GAC wrote a letter to the ICANN Board noting its continued concerns about competition, trademarks, and a controversial request to allow early warning to applicants whose applications might cause concern to national governments. (See, http://gac.icann.org/system/files/Singapore%20Communique%20-%2023%20June%202011_1.pdf.)

On the other hand, those who plan to apply for new TLDs and have invested time and resources in these projects have been frustrated by the delay.

Trademark Input

ICANN invited input from the trademark community by commissioning an Implementation Recommendation Team (IRT), which provided recommendations for the protection of intellectual property. Its suggestions included:

• An IP Clearinghouse, Globally Protected Marks List and associated Rights Protection Mechanisms, and standardized pre-launch rights protection mechanisms;
• A Uniform Rapid Suspension System (URS);
• Post-delegation dispute resolution mechanisms;
• Whois requirements for new
  TLDs; and
• The use of algorithm in string confusion review during initial evaluation.

Not all of these suggestions were adopted as written. For example, it was too difficult to determine how a mark would qualify for a Globally Protected Marks list, or even whether such a list would create a new property right. After more rounds of input from yet more committees, the rights protections have been largely adopted. See, www.icann.org/en/topics/new-gtlds/summary-analysis-agv6-30may11-en.pdf.

Landscape for New TLDs

Some domains will be brands, such as .canon, although rumors suggest that not many brands have announced an intention to apply. Others who have announced an intention to apply will be geography based, such as .berlin, .africa and .london; or cultural/linguistic, such as .zulu. Others will be demographic, such as .gay or .fam; thematic or commercial, such as .eco, .sport, .ski, or .hotel. Community domains designed to operate for the benefit of a specific community are also permitted.