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The Upcoming Internet Shift

Posted in Cyberspace Law

By: Lisa Y. Wang

The internet is about to change dramatically. Since Al Gore “invented” the world wide web, users have been used to using a limited number of top-level domains (“TLD”). A top level domain is the end portion of a web address (e.g. .com, .net, .org, .biz, and .gov). A second level domain name consists of the words in between www. and the TLD (e.g. apple in www.apple.com). Currently, there are 22 top level domains (such as .org, .edu, and, .com) and over 200 country based domains (such as .us, .de, or .eu). But, by this time next year there may over a thousand in multiple categories such as place domains (e.g. .nyc, .taipei), keyword domains (e.g. .hotel, .watch, .apparel) or even brand domains (e.g. .apple, .gap, .walmart). It is important to protect your business from potential consumer confusion and infringement when these new TLDs go live next year.

The Internet Corporation for Assigned Names and Numbers (“ICANN”), a non-profit corporation, manages most TLDs, internet protocol addresses, and basically anything that involves the URL itself. Last year, ICANN approved the creation of new TLDs called generic top-level domains (“gTLD”) to increase competition and choice in the world wide web. Any legal entity may apply to create and manage a gTLD.

The first round application period ended in April and on June 13, 2012 ICANN pubicly posted all the gTLD applications it received.   As predicted, there are thousands of applied for gTLDs ranging from brand domains  (.chanel, .americanexpress, .lamborghini, .mcdonalds, .marriott, .canon) to charity domains(.livestrong, .cancerresearch) to keywor domains (.doctor, .discount, .memorial, .now, .play, .ninja).  There are also several gTLDs with multiple applicants vying for the same domain (.mail, .luxury, .LLC, .art, .cloud, .blog, .book) and some creative gTLDs such as .afamilycompany for Johnson and Johnson.

Any organization that survives this application process and registers its chosen gTLD will have complete control over that gTLD. It can sell second level domain names for a price it chooses or it can ban public use altogether. For example, if Wellpoint, Inc. was approved for its applied-for.anthem gTLD, , it will have complete control over that top level domain. It can either sell a .anthem second level domain name to Anthem Blue Cross (e.g.www.bluecross.anthem) OR it can refuse to let anyone else use that gTLD.

Third parties have 7 months to file objections to the potential gTLDs. There are 4 bases for objections: string confusion (an existing TLD operator or gTLD applicant objects because the applied for gTLD is confusingly similar to another existing or proposed gTLD), limited public interest (the gTLD is contrary to generally accepted legal norms of morality and public order), community based (there is substantial opposition to the application from an established institution associated with a significant portion of the community that the gTLD targets, such as a coalition of cosmetic companies objecting to L’Oreal’s current application for the .beauty gTLD), and a legal rights objection.  Each objection is handled by a different dispute resolution service provider.

The legal rights objection is the most relevant and useful objection for individual third parties. A legal rights objection can be raised by any party that has valid rights in the gTLD. The legal rights objection essentially allows trademark owners to oppose the new gTLD application on the basis that the applied for domain would infringe on the trademark owner’s existing rights. However, it costs US$10,000 to file an objection and if the gTLD applicant has a legitimate right to that gTLD, then the legal rights objection will fail.

If you do not object to a gTLD, you can still protect yourself and your business by recording your trademarks with ICANN’s Trademark Clearinghouse. The Trademark Clearinghouse will hopefully be up and running by the end of the year and it will maintain a database of registered trademarks that new gTLD registrars can connect to. It will essentially act as a central storage unit of trademark information. A trademark owner has three months to submit its trademarks to the Trademark Clearinghouse before the new gTLDs go live in early 2013.

Entering a registered trademark in the Clearinghouse offers business owners different types of protection. These trademark owners will have the opportunity to register a second level domain name that constitute their trademark for all the gTLDs before registration is available to the general public. This is called the Sunrise Period. The Sunrise Period basically allows eligible rights holders an early opportunity to register second level domain names in all the new gTLDs. In addition, any entity attempting to register a second level domain name that is already recorded in the Trademark Clearinghouse will be notified that its proposed second level domain name consists of an existing trademark. Likewise, a trademark owner that registers its mark in the Trademark Clearinghouse will be notified of any possibly infringing second level domain name registrations in all the gTLDs.

ICANN has also set up dispute resolution procedures. The Uniform Rapid Suspension System (“URS”) provides an expedited procedure for addressing clear cases of possible gTLD trademark infringement. The URS offers a streamlined process that is a quicker alternative to the existing procedure available for general domain name disputes.

While this may sound like convoluted technology and legal speak, it is important that business owners protect their rights before the roll out of a thousand new gTLDs in 2013. If you have the monetary means to object to a proposed gTLD, then be sure to check the ICANN website in May for a listing of all gTLD applications. Otherwise, make sure you register your trademarks (if you have any) with ICANN’s Trademark Clearinghouse.