For most of the history of the internet, only a few generic top-level domains (gTLDs), such as .com or .net, have been available to most users. That changed in June 2011, when the Internet Corporation for Assigned Names and Numbers (ICANN) decided to open a window of time to allow applications for new gTLDs. The window was open from January 12 to May 30, 2012, and in that time ICANN received more than two thousand applications. After a review by ICANN, many of these gTLDs may go live by next year. Until that time, ICANN has made a list of all pending applications available to the public, and has placed the burden of identifying possible trademark infringement on the trademark owners.
ICANN is a California-based nonprofit organization that manages the global registry of domain names and IP addresses, which computers use to locate particular websites. It also maintains the current list of twenty-two gTLD’s. The current system began in the 1980’s with only seven gTLDs, and ICANN has gradually expanded the list, which now includes .biz, .info, the recently-added and controversial .xxx, and several more. Many of the new proposed gTLDs are merely descriptive, such as .school or .beer, but some contain brand or trade names that may infringe existing trademarks.
In deciding to allow applications for new gTLD’s from the public, ICANN created an application process that would deter all but the most determined applicants. The process requires an extensive packet of information and a non-refundable fee of $185,000 for each proposed gTLD. Some start-ups claim to have raised hundreds of millions of dollars to pursue numerous potentially lucrative gTLD’s. An existing procedure for domain name disputes is available for trademark owners to dispute new gTLDs that they allege infringe on existing trademarks. ICANN has also established procedures for initiating a dispute before a new gTLD receives ICANN approval.
The Uniform Domain Name Dispute Resolution Policy (UDRP) is a procedure for domain name disputes. Most domain name registrars require anyone registering a domain name, as part of the registrar’s terms of service, to agree to be bound by the UDRP. A trademark owner may submit a dispute to an ICANN-approved dispute resolution organization, which has the authority to award the rights to the domain name to the complainant in cases of “bad faith” or “abusive” domain name registration.
The Post Delegation Dispute Resolution Procedure (PDDRP) offers another alternative method of dispute resolution over domain names and gTLDs. It applies in cases where a registrant’s “affirmative conduct” in its use of a gTLD causes or “materially contribute[s] to” infringement or abuse of a trademark. The UDRP and PDDRP may only be available after a domain name has been registered, so they may be inadequate for some gTLD disputes, where a trademark owner might prefer to stop a gTLD before it becomes public.
A Trademark Clearinghouse established by ICANN allows trademark owners to submit information on their marks, which will be available to gTLD applicants during the application process. ICANN now also allows a trademark owner to file a Legal Rights Objection to a pending gTLD application. In “clear-cut cases of trademark abuse,” the Uniform Rapid Suspension system (URS) allows a trademark owner to request temporary suspension of a gTLD pending an administrative review procedure.
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Web Resources:
Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP) (PDF file), Internet Corporation for Assigned Names and Numbers, January 11, 2012
Uniform Rapid Suspension System (“URS”) (PDF file), Internet Corporation for Assigned Names and Numbers, January 11, 2012
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Protecting Your Online Identity–and Reputation, Part 1, Prism Risk Management Blog, July 24, 2012
New Entrants in the Cloud Computing Sector Offer Options, Risks to Businesses, Prism Risk Management Blog, June 26, 2012
U.S. Utilities Face Cybersecurity Risks as Hacker Attacks Mount, Prism Risk Management Blog, June 11, 2012
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