The ongoing evolution of the Internet Domain Name System (DNS) continues to affect trademark owners in 2013, with several important milestones recently announced by the Internet Corporation for Assigned Names and Numbers (ICANN).
ICANN’s program for introducing new generic top-level domain names (gTLDs) will require trademark owners to manage ever-increasing complexities in a changing Internet environment. The Internet DNS is currently populated with 22 gTLDs in Latin-based scripts. The most popular top-level domain continues to be .com, with over 100 million second-level registrations. In addition, there are several hundred country-code top-level domain names (ccTLDs) used by countries and territories for promoting their local identity on the Internet, with a combined base exceeding 100 million registrations.
New gTLDs—Starting with IDNs—Will Launch in 2013
ICANN’s new gTLD program is set to significantly increase the number of generic top-level domains on the Internet. In June of last year, ICANN announced it had received nearly 2,000 applications for approximately 1,400 unique new gTLDs or “strings,” and began its evaluation process while committing to delegate no more than 1,000 new gTLDs per year. Several months later, ICANN held a draw to determine the chronological order for processing the applications, and announced it would prioritize applications for new gTLDs in non-Latin-based scripts, which are referred to as Internationalized Domain Names (IDNs).
Among the new gTLD applications were 116 applications for IDN gTLDs, in 12 different non-Latin-based scripts (with the Chinese script being most prevalent). As of now, the DNS includes over 30 IDN country-code domains (such as “.中国,” which means “China” in simplified Chinese characters), but there are no IDN gTLDs currently in existence.
The formal objection period—when trademark owners could submit legal rights objections on infringing new gTLD applications, through the World Intellectual Property Organization (WIPO)—was scheduled to conclude on March 13, 2013. The results of the initial evaluations are expected to be released shortly following the close of the objection window. ICANN’s new Chief Executive Officer recently stated that ICANN may be ready to recommend the delegation of the first new IDN gTLD as early as May 2013, ahead of its earlier-estimated timeframe.
In light of the unexpectedly high volume of applications for new gTLDs, INTA—through its participation in ICANN’s Intellectual Property Constituency (IPC)—provided ICANN a set of recommendations to improve its trademark and consumer protections in new gTLDs. In response, ICANN published a portion of these recommendations for public review and commentary, and is in the process of considering whether to implement the enhanced protections through its Trademark Clearinghouse (TMCH) database. The TMCH database was originally proposed by the Implementation Recommendation Team (IRT), formed by ICANN’s IPC in 2009, to serve as a single repository for validated trademark rights information and to provide a suite of rights protection services.
Trademark Clearinghouse Set to Launch March 26
ICANN has announced that the TMCH will open for registrations on March 26, 2013. Every new gTLD registry will be required to interface with the TMCH database, to provide trademark protection services to brand owners by enabling “Sunrise Registration” and “Trademark Claims” services in each new gTLD registry. The TMCH will accept and verify nationally or regionally registered trademarks, court-validated marks and marks protected by statute or treaty. In addition, the TMCH may accept and verify other types of marks upon the request of gTLD registries.
The TMCH provides two primary functions: (1) authenticating contact information and verifying trademark rights information; and (2) storing the information in database format so new gTLD registries can interface with the data and register domain names at the request of trademark owners during the Sunrise Period, or notify a trademark owner if a third party makes a conflicting domain registration during the limited Trademark Claims service period.
The Sunrise Period is a limited pre-registration window when trademark owners can register domain names that match their trademarks submitted to the TMCH. The Trademark Claims service period is a second limited period that will follow the Sunrise Period. The Claims service notifies both potential domain name registrants and trademark holders of possible infringing domain registrations. A prospective domain name registrant will receive a notice when attempting to register a domain name that matches a trademark in the TMCH. If, after receiving and accepting the notice, the domain name registrant proceeds to register the domain name, the trademark holder will receive notification of the registration. It is important to note that the Trademark Claims period will last only for the first 60 days after each new gTLD launches; this window may be extended, depending on the outcome of ICANN’s deliberations on the enhanced trademark protections proposed by the IP community.
The scope of rights eligible for entry in the TMCH includes all nationally or regionally registered trademarks from all jurisdictions, any trademark validated through a court of law or other judicial proceeding and trademarks protected by a statute or a treaty in effect on or before June 3, 2008. Prices range from US$95 to US$150 per trademark record per year, depending on the number of trademarks submitted and the length of their registration period in the TMCH. Trademark owners who are interested with registering with the TMCH can contact their domain service provider or any agent offering related services, or they can do so directly by visiting the TMCH website
Uniform Rapid Suspension (URS) Service Provider Selected
ICANN also recently announced it has selected the National Arbitration Forum (NAF) to serve as the first provider for its Uniform Rapid Suspension (URS) System. The URS was proposed as a new enforcement mechanism in new gTLDs, similar to the existing Uniform Domain Name Dispute Resolution Policy (UDRP), which is currently administered by several providers, including WIPO and NAF.
However, the URS differs from the UDRP process in several important ways. The domain names in dispute are not transferred to a prevailing complainant, but are suspended and then eventually re-released into the pool of available domains. In addition, respondents can respond even after a determination is made against them; penalties exist for abusive filings, and an internal appeal process is built into the system. The URS is intended for clear-cut cases of cybersquatting, requires a higher burden of proof (clear and convincing evidence) and is designed to adjudicate cases more quickly and at a lower cost compared to the UDRP service.
INTA will inform the trademark community as further new gTLD program milestones are reached in 2013. Educational programming on Internet issues will take place at INTA’s Annual Meeting in May in Dallas, Texas, USA.
ICANN’s next international public meeting with take place in Beijing, China, April 7–11. INTA continues to work actively within ICANN’s multi-stakeholder model to represent the interests of trademark owners. Please contact INTA External Relations Manager Claudio DiGangi (firstname.lastname@example.org
) for more information on INTA’s Internet Committee and its activities within ICANN.
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