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INTA Bulletin


December 15, 2013 Vol. 68 No. 23 Back to Bulletin Main Page

ICANN Update: New gTLDs and Report from Buenos Aires


ICANN’s third and final public meeting of 2013 took place from November 17–-22 in Buenos Aires, Argentina.

Over the past two months, ICANN has delegated more than 30 new gTLDs, including five IDNs. After passing the technical tests that occur pre-delegation, each registry operator must provide ICANN with “startup” information, including dates for the mandatory Sunrise Period, before the registry can accept domain registrations from the general public.

In Buenos Aires, representatives of ICANN’s Trademark Clearinghouse (TMCH) repository reported that more than 17,000 trademark records have been deposited in the TMCH. Of all TMCH trademark records, approximately 25 percent have been deposited directly by approximately 1,100 trademark owners, with the remainder of records deposited by trademark-holder agents (currently, 163 law firms or registrars). In addition, the ability to add “abused labels” to enhance the Trademark Claims Service protection is now available for use by trademark owners. The Abused Domain Name label service now has more than 70 Uniform Domain Name Dispute-Resolution Policy (UDRP) cases validated, enabling a broader range of infringed-trademark terms to be covered under the Trademark Claims Service. TMCH submission errors are down from 70 percent to 20 percent, with the “proof of use” requirement having the greatest improvement among categories of common errors.

The TMCH also announced on December 12 that it will offer a free “extended claims service.” According to a press release, “Trademark holders will be notified of potential intellectual property infringement indefinitely, beyond the original 90 day period.” However, a claims notice will not be sent to the prospective domain registrant during extended claims.

INTA has long advocated for a more comprehensive claims service to prevent trademark abuse and protect consumers in new gTLDs.

Internet Stability and Security Challenges
In light of the recent delegation of over 30 new gTLDs, ICANN recognized in Buenos Aires that ensuring the ongoing security and stability of the Internet DNS—one of its core functions—is a challenge facing the organization.

In particular, as technical coordinator of the Internet DNS, ICANN is responsible for managing and mitigating risks associated with new gTLDs, such as increasing the size of the Internet’s root zone database, and technical occurrences known as “name collisions.”

Generally, according to ICANN, a “name collision” occurs when Internet users unknowingly access a name delegated in the public DNS when the user’s actual intent was to reach a private resource on a non-public network. While the extent of harm from name collisions has not been fully studied by ICANN, the corporation is working to mitigate risks with new operating rules for new gTLD registries through the development of a “name collision occurrence management framework,” which was adopted on October 7, 2013.

Impact on Trademarks
As a result of these concerns related to Internet stability and security, ICANN has provided all new gTLD registries (with the exceptions of .home and .corp) with the option to either delay delegation until further study is completed or choose an “Alternate Path to Delegation.” If the new gTLD registry chooses the “Alternate Path to Delegation,” ICANN will develop a list of labels (names) to be blocked at the second level under the new gTLD. In the interim, if a new gTLD registry operator chooses to proceed to launch its gTLD before receiving its “collision occurrence assessment report,” the new registry must initially block all second-level domain names that ICANN has identified in a data set while it completes further study on the issue.

Moreover, ICANN recently announced that these “blocked” second-level domain names must still be included in registries’ Sunrise and Trademark Claims Periods but cannot be activated by the trademark owner until the mitigation measures are implemented. If a registry operator allocates names from the blocked list during the Sunrise or Trademark Claims Period, it must inform the trademark owner that the domain cannot be activated and may never be activated subject to the gTLD’s Name Collision Occurrence Assessment.

Sunrise Process Underway
Several new gTLD Sunrise Periods are currently in process. Trademark owners can review all completed new gTLD registry agreements here and track each Sunrise Period through the TMCH website: http://www.trademark-clearinghouse.com/sunrise.

INTA is planning a free online webinar on new gTLDs following the start of 2014, and will be providing various other resources. An educational session covering the latest updates and expert views on new gTLDs will take place at next year’s Annual Meeting in Hong Kong.

For more information or if you have any questions, please contact Claudio DiGangi, INTA’s External Relations Manager, Internet & the Judiciary, at cdigangi@inta.org.

Top Questions on IDNs and New gTLDs Answered

During a September webinar on protecting trademarks in new gTLDs and Internationalized Domain Names (IDNs), participants submitted questions about the Trademark Clearinghouse (TMCH) on topics ranging from requirements for proof of use to license agreements to mixed marks and jurisdiction. All of the questions submitted, along with answers, have now been compiled; they are posted on the new gTLD page at INTA.org. Here are two of the questions that came up.

For Sunrise eligibility, are there any date restrictions for registered trademarks?
All registered trademarks of national or regional effect, regardless of registration dates, are accepted in the Trademark Clearinghouse, see: http://trademark-clearinghouse.com/content/registered-trademarks

New gTLD registry operators are permitted to impose up to a one-year date restriction on a trademark. Such date restrictions, subject to the registry operator’s discretion, may be imposed on a TLD-by-TLD basis. Trademark owners will need to confirm each specific registry’s rules to determine whether any such date restrictions are in place for a particular TLD’s Sunrise Period.

If you record the trademark as a licensee, does this mean the licensee may then register domains during the Sunrise period? How does the TMCH know that this is permitted by the owner, or even that the person who says they are a licensee actually is?

The Clearinghouse does not accept license agreements and thus does not make a legal opinion as to validity. If the licensor submits a Licensee Declaration (template found on the TMCH website), they enable the licensee to register the trademark record and to have the licensee mentioned on the Signed Mark Data (SMD) file, thus allowing the licensee to register domain names during the Sunrise period.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2013 International Trademark Association