New gTLDs Still On Track Despite Trademark Concerns

For some time now, the Internet Corporation for Assigned Names and Numbers (ICANN) — the governing body of many of the inner workings of the Internet — has planned to expand the domain name space. Currently, domain names are limited to 27 generic top-level domains (gTLDs) — including the popular .com, .net., and .org — and a number of country code top-level domains (ccTLDs). ICANN’s proposed expansion would allow for the introduction of unlimited new gTLD registries — for instance, .lawyers, .film, or .baseball. Presumably, a majority of these new registries will be open to the public for registration of "second-level" domain names — for example, an organization might purchase and operate the .lawyers gTLD registry, and then sell second-level domain names (e.g., foleyhoag.lawyers) to the public.

Rollout of the new gTLD process has been stalled — again and again — in part due to concerns over inadequate rights-protection mechanisms (RPMs) for trademark owners. Brand owners, already up to their ears in dealing with cybersquatting and trademark infringement stemming from a mere handful of gTLDs and ccTLDs, are understandably concerned that the addition of new gTLDs will exacerbate an already costly problem, and those brand owners and related advocacy groups have loudly protested ICANN’s expansion plans. Among other concerns, brand owners are worried that "defensive" registrations will be required in the first instance — for the gTLDs themselves as well as second-level domains thereof — and that traditional Internet trademark policing will become overwhelming once the new domain name registries are up and running.

The new gTLDs are projected to be costly. ICANN will charge an application fee currently projected at $185,000, in addition to significant annual maintenance fees. Further, applicants must demonstrate the ability to run — from logistical and technical standpoints — a domain name registry, and will be responsible for all costs associated therewith. This provides some comfort to brand owners in that there is unlikely to be "casual" cybersquatting on new gTLDs. However — despite this barrier to entry to gTLDs themselves — second-level domain registrations, as with registrations of domains in the current gTLD structure, are likely to be available at little cost.

Although dispute resolution procedures will be available allowing brand owners to object to new gTLD applications and second-level domains thereof (the details of which have yet to be finalized), this is a narrow remedy. In order to address trademark concerns (and in response to significant public outcry), ICANN commissioned a team to recommend specific trademark protection measures. In May 2009, the team proposed 5 measures:

1. A trademark "clearinghouse" of protected names that would streamline rights protection, including enhanced protection for "globally protected marks"

2. A Uniform Rapid Suspension (URS) system for cases of clear infringement or abuse that would be more straightforward and less costly than current dispute resolution procedures for domain names (such as the UDRP)

3. Improved dispute resolution systems for new gTLD registries (e.g., for dealing with infringement and abuse regarding second-level domains)

4. A "thick" WHOIS requirement for all new domains (comprehensive registry-level ownership information)

5. Adoption of an expanded algorithm to allow non-infringing gTLD applications to move forward more quickly

In Version 3 of its Draft Applicant Guidebook (PDF), ICANN adopted provisions for the thick WHOIS and the improved post-delegation dispute resolution system, and somewhat limited versions of the clearinghouse and URS are expected to be included in Version 4, which should be released shortly.

Unfortunately, the fine details of the proposed RPMs — and, consequently, whether they will adequately protect trademark owners in a system already plagued with cybersquatting and infringement — are unknown. What is clear is that ICANN is determined to move forward with the new gTLD applications sooner or later, so trademark owners should be prepared. We will be following this issue closely over the coming months, so check back for updates.