The Internet is About to Change - Are You Ready For New
gTLDs?
By: Maria
Crimi Speth
In 2012, we may not see the end of the world, but we will see the
end of the Internet world as we know it. Currently, there are
roughly two dozen generic top level domains known as "gTLDs" and
about 250 country codes. The most popular gTLD is .com and
other popular gTLDs are .org, .net and .biz. In June, ICANN,
the organization who is responsible for coordinating the domain
name system, approved a new gTLD program which will release
unlimited gTLDs.
Applications will be accepted beginning January 12, 2012 to allow
registries to purchase any string of three or more characters as a
gTLD. The application period will close on April 12,
2012. As an example, new website domains might end with
.cars, .football, or .movies. ICANN is engaged in a marketing
campaign to create a buzz about these new domains and some in the
industry are predicting that there will be hundreds or thousands of
new gTLDs.
If you are thinking that this may be interesting but has no effect
on you or your business, think again. New gTLDs could include
brands such as .disney, .godaddy, .cocacola, or .nike. And,
even your brand name could become a gTLD.
Brand owners have several options for protecting their trademarks
in this new unlimited gTLD system. One possibility is to
purchase a gTLD which is your brand name. This, however, is a
major financial commitment. Only a domain registry can
purchase a gTLD. Thus, in order to purchase a gTLD, you must form
and operate a domain registry. A domain registry will be
required to execute a 10-year registry agreement with ICANN, and
must meet various ongoing ICANN compliance requirements. With
a starting price for gTLDs at $185,000, and ongoing financial
expenditures to operate the registry, it is expected that only a
few brand owners will actually purchase their own brand as a
gTLD. However, it is expected that for example, the NFL might
share the cost with NFL teams and create sites such as broncos.nfl
or packers.nfl.
For most brand owners, the trademark protection mechanisms that
ICANN has built into the new gTLD system to protect trademark
owners will be their only financially feasible option. In
late April 2012, after the close of the application period, ICANN
will make the gTLD applications available to the public. There will
then be a dispute resolution procedure to allow for formal
objections during the application process. The process
provides a path for formal objections during evaluation of the
applications. It allows certain parties to have their objections
considered before a panel of qualified experts before the gTLD
application is granted. There will be several possible
grounds for objection, the most pertinent of which is a "legal
rights objection" which will permit a brand owner to object on the
grounds that the gTLD is confusingly similar to its
trademark.
There will also be a post-delegation procedure to address issues
that arise after the gTLD is awarded to a registry. This
process may come into play if the original registration appeared
harmless, but the registry is acting in a manner that is causing
harm. For example, if a registry purchases .apple, that may
appear harmless since apple is a common fruit and perhaps the
registry represents apple growers. However, if the .apple
registry then sells domain names such as computer.apple,
laptop.apple, ipad.apple, ipod.apple, etc., Apple Computers would
have grounds to challenge the registry's practice of permitting
domain names that take unfair advantage of Apple's
reputation.
Another procedure available will be to challenge a single domain
name on the grounds that it is identical or confusingly similar to
your federally registered trademark. For example, if someone
registers the domain name Southwest.airlines, then Southwest
Airlines would have a remedy. One available procedure will be
Uniform Rapid Suspension, or URS. You will want to institute
a URS proceeding if the registered domain name is identical or
confusingly similar to your federally registered trademark if the
registrant has no legitimate rights in the domain name and has
registered it in bad faith.
ICANN will hire a third party to implement a Trademark
Clearinghouse to keep a database of registered trademarks.
Participation in this Trademark Clearinghouse is important to your
protection of your brand. You may enter your federally
registered trademark into the Trademark Clearinghouse database to
obtain some important protections that would otherwise not be
available. Registries will give owners of trademarks entered in the
Trademark Clearinghouse the right to register a domain name
consisting of the trademark before registration is available to the
general public. For example, the registry that purchases
.coffee will offer Starbucks the right to purchase starbucks.coffee
before it is available to the public. Also, those attempting
to register a domain name that is in the Trademark Clearinghouse
will be notified that the proposed domain name is a trademark and
owners of trademarks entered in the Trademark Clearinghouse will
receive notice when someone registers a domain name that is
identical to the owner's
trademark.
In order to be prepared for these changes, make sure your trademark
is federally registered. Federal registration takes
approximately eight months, so if you haven't already done so,
apply for your registration now. Jaburg Wilk offers
reasonable flat fees on registrations and we are happy to
help. This is complex and uncharted territory. To help
you navigate, we will provide more detailed information as the gTLD
program launch approaches and important deadlines are
established.
About the author: Maria
Crimi Speth is an intellectual property attorney at the Phoenix
law firm of Jaburg Wilk and
sits on the prestigious International Trademark
Association-Internet committee. She is the department head of
the intellectual
property group and has expertise in copyright law, trademark,
trade name, Internet law and intellectual property litigation.
Maria is the author of the book of
Protect Your Writings: A Legal Guide for
Authors. She can be reached at 602.248.1000
or mcs@jaburgwilk.com.
This article is not intended to provide legal advice.
Always consult an attorney for legal advice for your particular
situation.