ICANN Continues March Toward Generic Top Level Domains
Article Date: Thursday, November 04, 2010
Written By: Jay Yates & Jeffrey S. Whittle
In what has been an on-going saga, development, and steady march, the Board of Directors of the Internet Corporation for Assigned Names and Numbers (“ICANN”) recently reiterated its support for its proposed new generic Top-Level Domain (“gTLD”) registration system. In related developments the ICANN Board also approved additional Internet domain names using Chinese script, and voted to allow the controversial .XXX top-level domain (“TLD”). The ICANN Board of Directors also announced it would use its Sept. 24-25, 2010 retreat for consideration of all the outstanding issues relating to the implementation of the new gTLD program following one more public comment period on the Draft Application Guidebook. To brand owners without an Internet strategy or plan for new domain names, ICANN’s actions should signify that new gTLDs are a matter of timing, i.e., not if, but when.
Internationalized Domain Names
During the 38th ICANN International Public Meeting held in Brussels, Belgium on June 20-25, 2010, ICANN approved, under its current policy, applications for five country-code top-level domains (“ccTLDs”) using Chinese character sets by three separate organizations, namely the China Internet Network Information Center (“xn–fiqz9s”, “xn–fiqs8s”), the Hong Kong Internet Registration Corporation Limited (“xn–j6w193g”), and the Taiwan Network Information Center (“xn–kpry57d”, “xn–kprw13d”). This expansion of TLDs is intended as “a significant change for Chinese language users,” according to Rod Beckstrom, president and CEO of ICANN, and to increase the potential online accessibility for roughly one billion people who use Chinese script. See ICANN Approves Chinese Internationalized Domain Names, June 25, 2010, available at http://icann.org/en/news/releases/release-25jun10-en.pdf
(last accessed Sept. 26, 2010).
Earlier this year, Egypt, the Russian Federation, Saudi Arabia and the United Arab Emirates received approval by ICANN to use their non-Latin language scripts in the top-level domain part of an Internet address name, allowing for the first time for an entire Internet address name to be written in non-Latin characters, specifically Arabic and Cyrillic. See ICANN Gives Final Approval for Four Countries to Use Non-Latin Languages in Internet Address Names, April 22, 2010, available at http://icann.org/en/news/releases/release-22apr10-en.pdf
(last accessed Sept. 26, 2010).
.XXX Community Site
In a controversy going back to 2004, ICM Registry, Inc. previously filed an application for the .XXX sponsored Top-Level Domain (“sTLD”) as a potential community site for the adult entertainment industry. The application had previously been denied by ICANN and subsequently had an independent review by a three-member panel, supported by documentary evidence and witness testimony. During the 37th ICANN International Public Meeting held in Nairobi, Kenya on March 7-12, 2010, the ICANN Board of Directors agreed to create a process to reconsider the proposed controversial .XXX sTLD.
Following six years and over 13,700 comments since the original application, the ICANN Board of Directors voted in June to allow the application to move forward.
Currently, there are 21 active gTLDs (e.g., .COM, .NET, and .ORG) and over 250 ccTLDs (e.g., .US, .FR, .CA, and .UK) that identify Internet space just as zip codes and country codes identify real space. ICANN’s proposed new gTLD registration system is an effort to expand the list of active gTLDs. New gTLDs could include brand-specific domain extensions such as .MYCOMPANYNAME, geographic-centric domain names such as .TEXAS, and even generic domain extensions such as .SOFTWARE.
Although the new gTLDs registration system has met resistance from brand owners over insufficient trademark protections, ICANN has been resolute in moving forward, while revising its Draft Application Guidebook to incorporate some trademark protections. The current Draft Application Guidebook Version 4 includes, for example, improvements for a Trademark Clearinghouse and Uniform Rapid Suspension (URS) system.
The Trademark Clearinghouse will provide a single database of authenticated trademarks that can be used for pre-launch intellectual property Claims Services across multiple gTLDs. Pre-launch Claim Services may include, for example: (1) a “Trademark Watch” service to provide notice to trademark owners of any new domain name registrations matching their trademarks and notice to registrants that matching trademark registrations exist; or (2) a “Sunrise Period” during which trademark owners could register domain names matching their trademarks recorded with the Trademark Clearinghouse prior to general registration of domain names on a new gTLD.
The proposed URS system will provide an inexpensive and expedited procedure for addressing clear cases of trademark infringement by domain name registrants, resulting in a suspension, but not transfer, of the domain name. For a transfer of an infringing domain name, a brand owner must still pursue the standard Uniform Domain-Name Dispute-Resolution Policy (“UDRP”).
Importantly for brand owners, these limited trademark protections require registered (or court-validated) trademarks, so brand owners are advised to secure all unregistered trademarks expeditiously. Under ICANN’s current proposal, moreover, brand owners will have the additional burden of proactively submitting their trademarks to the Trademark Clearinghouse, once it is formed, in order to receive its protections.
Submission of public comments regarding the trademark protections or the new gTLDs program were allow up through July 21, 2010. These public comments will be summarized and analyzed by ICANN staff for presentation to the ICANN Board of Directors. In Brussels, the ICANN Board of Directors further announced it will use its Sept. 24-25, 2010 retreat for consideration of all the outstanding issues relating to the implementation of the new gTLD program. See http://www.icann.org/en/minutes/resolutions-25jun10-en.htm (last accessed Sept. 26, 2010). Although there is no date certain for the launch of new gTLDs, the ICANN’s progress and resolve suggest that new gTLDs are only a matter of timing, i.e., not if, but when.
Not just for Registries
Although companies that act as registries and also social media companies have unsurprisingly expressed interest in new gTLDs, at least one major brand owner has announced it will begin the acquisition process for the top-level domain name for its major brand. In March, Canon Inc. fired the first shot in domain name revolution, announcing its efforts to focus online communications using the domain name .CANON. See Canon to begin acquisition of the “.canon” Top-Level Domain name, March 16, 2010, available at http://www.canon.com/news/
(last accessed Sept. 26, 2010).
For brand owners without an Internet strategy or a plan for new domain names, in light of ICANN’s recent announcements, Canon’s announcement could be considered a shot heard ‘round the World Wide Web. Once again, brand owners should prepare accordingly as the march toward gTLDs continues and soon becomes a reality.
Jay Yates is an associate with Bracewell & Giuliani, LLP in their Houston, Texas office.
Jeffrey S. Whittle is a partner with the law firm of Bracewell & Giuliani, LLP in their Houston, Texas office, is a graduate of Wake Forest University School of Law, and admitted to practice in North Carolina (as well as Texas and Florida).
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