Dramatic changes to the Internet will significantly impact trade-mark owners
The Internet Corporation for Assigned
Names and Numbers (ICANN) opened the door in 2012 to applications for an
unlimited number of new Internet domain name endings, called generic Top
Level Domains (gTLDs), such as .shop, .microsoft, .nike, or .sony. The ICANN
Board resolution of June 20, 2011 allowing an unlimited number of gTLDs
comes after many years of discussion and policy revision to the application
process by the community, business groups and governments.
ICANN is a company created
at the request of the Department of Commerce of the USA to provide technical
support and policy oversight to the Domain Name System (often incorrectly
called the “Government of the Internet”).
The process will
dramatically increase the number of gTLDs from the current 22, which include
familiar domains such as .com, .net and .org. Whereas brand owners and
others were previously limited to registering brands as second level domain
names (i.e., BRAND.com), there will now be the option to register for top
level domains (i.e., anything.BRAND) and the ability to register brands at
the second level of new gTLDs registered by others (i.e., BRAND.vacation).
Applications for new gTLDs
will be accepted between January 12, 2012 and April 12, 2012. It is expected
that the first new gTLDs will start technical operation in early 2013. ICANN
is also set to begin a global campaign to inform the world about the
dramatic changes in Internet names.
What
new Top Level Domains mean for trade-mark owners
New gTLDs will change the way
information is found on the Internet, and how businesses are able to
structure their online presence. With this change come significant risks to
brand owners, including a potential increase in cybersquatting and a
decreased ability to effectively deal with rights infringements.
Brand owners are faced not only with
the decision of whether or not to apply for a top level domain, but should
also carefully review their online brand protection strategies quickly.
Considering
whether to apply
Determining whether to apply for a gTLD
involves consideration of all that the operation of a gTLD will entail. An
applicant for a gTLD will not only secure the IP address (i.e., registration
of a domain name under a particular gTLD), but will obtain the gTLD itself.
Because of this, the applicant must provide the registry, and must operate
it in technical and financial terms. Most will “farm this function out” to
established Registries called “back end” Registries like Neustar or Afilias.
Application fees will
amount to approximately US$185,000, however, it is expected that the “real
cost” to applicants will be approximately US$500,000. It is estimated that
the annual cost of running a gTLD registry will be in the range of US$25,000
plus. As such, only the largest and most financially stable of brand owners
will likely apply.
Advantages of applying for
a new gTLD include an increased opportunity to control and exploit key
brands, greater security, choice and flexibility in domain extensions, and
the ability to better ward off cybersquatters and their impact.
In making the assessment as
to whether to apply for a gTLD, businesses should be familiar with the
Applicant Guidebook (AGB) which was approved by the Board. This is the
rule book for applicants which describes the new gTLD program requirements
and evaluation processes.
Review
of online brand protection strategies
Regardless of whether a business
decides to apply for a new gTLD, the threats for trade-mark owners created
by the plan will be present. Trade-mark domain name and enforcement
strategies must be revised, by consulting appropriate legal counsel, in
order to prepare for the expansion of the domain name system. Trade-mark
portfolios and key markets should be reviewed and updated, including
applying for local language variant trade-marks (IDNs) and/or understanding
their implications.
Third party applications
for new gTLDs should be monitored. On April 27, 2012, a list of applications
will be published, and will be subject to a public objection process, with
one ground of objection being the protection of existing legal rights,
including trade-mark rights. Brand owners should be prepared to submit
objections to ICANN during the commenting period.
Brand owners should also
consider applying to have their trade-marks included in the Trademark
Clearinghouse, which is a repository of brands that will support certain
rights protection mechanisms that will be required of new gTLD registries.
We
can help! – Unique experience
Shapiro Cohen has considerable
experience with the domain name system and Internet governance, and has
advised clients on various aspects of the system for the past 12 years.
Shapiro Cohen is uniquely
positioned to provide advice on every aspect of the new gTLD application
process, including the preparation and submission of applications, as well
as advice on brand enforcement strategies and overall internet trade-mark
and domain name strategy.
Shapiro Cohen’s domain name
team is heavily involved with ICANN through membership with the Intellectual
Property Constituency (IPC), since its birth in 1999.
Senior Partner, Jonathan
Cohen, has also been a President of the IPC, a member of the Board of
Directors of ICANN and of the Canadian Internet Registration Authority
(CIRA), and was recently a member of the important Implementation
Recommendation Team (IRT), which was a group of international domain name,
trade-mark and ICANN experts set up by ICANN to advise the Board on the
development of Rights Protection Mechanisms for the new gTLDs. In Singapore,
Mr. Cohen was a moderator of a Panel of Experts considering the future of
UDRP in the new NO LIMIT TLD world now being ushered in by ICANN.
In addition, Shapiro Cohen
is connected to a new company designed specifically to help clients with all
aspects of the financial, technical, legal and intellectual property issues
associated with the launch of the new gTLD program.
