The New gTLD Program: What, When, and Why

The New gTLD Program:

What, When, and Why Jeff Van Hoosear April 16, 2012

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2 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.

Overview

• New gTLD program: What, When, and Why

• Anticipated gTLDs

• Important dates

• Preparing for the new gTLDs

• Rights Protection Mechanisms (RPMs)

• Questions? (don’t make them too hard)

• http://newgtlds.icann.org/en

• http://newgtlds.icann.org/en/applicants/agb

http://newgtlds.icann.org/en

http://newgtlds.icann.org/en/applicants/agb


WHAT is a gTLD?

• A gTLD is not a domain name.

• A gTLD is a name space

• A gTLD is part of the Internet infrastructure (like .com, .net, .de)

• A new gTLD is one of two types: Community-Based and Standard

• A new gTLD can not have numbers or dashes

• A new gTLD must have three or more distinct characters

• A new gTLD can not be the name of a country or territory

• A new gTLD must not be on ICANN’s reserved list (34 names)


Community-Based

• Only open to applicants of a clearly identified, organized, and pre-established community


Standard

• Open to any type of applicant


WHEN does the new gTLD program happen?

• Registration Closes: March 29, 2012

• Application Period Closes: April 12, 2012 (ext. to April 20, 2012)

• “Reveal Day”: May 1, 2012

• Application Comment Process Closes: June 30, 2012

• Objection Period Closes: November 1, 2012

• Initial Evaluation Begins: June 12, 2102

• Initial Evaluation Ends: November 12, 2012

• Last Day to Request Extended Evaluation: November 29, 2012

• Phase for Complex Applications: November 30, 2012

• New gTLDs available: January 2013 (?)


WHY is there a new gTLD program?

• Growth?: 22 gTLDs to 1000+ gTLDs

• Change?: apps, social media, e-tailers

• Innovation?: new ideas, new services, new competition, new fees

• IP law needs more acronyms?: RPM, URS, PDDRP, RRDRP


“Geographical” TLDs

• .athens

• .berlin

• .boston

• .california

• .chicago

• .dallas

• .hamburg

• .hongkong

• .london

• .madrid

• .miami

• .nyc

Such gTLDs will need “governmental approval”


“Generic” TLDs

• .artist

• .bike

• .cats

• .green

• .love

• .peace

• .poker

• .rugby

• .wine


“Brand” TLDs

• .canon

• .hitachi

• .google

• .youtube

Not many companies have publicly announced

plans to register

Pepsi and Facebook stated they would not register


Decisions, Decisions, Decisions

• Is it worth applying?

– application fee: $185,000

– total estimated cost of application process: $500,000

– total estimated costs commitment: $2,000,000

• Is there any contention?

– American Airlines/American Apparel/American Express

• Is there a real business reason?

– control over dealers, agents, resellers, distributors

– ability to designate a secure space for consumers (banking, shopping, studying)

– inability to register “.com” domains

• Is what competitors do a concern?


Important Dates


Important Dates


Preparing for the new gTLDs

• Review the submitted applications: May 1, 2012

– Consider summiting Comments or filing Objections

• Prepare for the launch of new registries starting in 2013

– Submit information to Trademark Clearinghouse

– Budget for new registrations

– Review your domain holdings

– Review your policies and procedures for monitoring and policing brand abuse/infringement

• Understand the new RPMs (Rights Protection Mechanisms)

– URS (Uniform Rapid Suspension)

– Trademark Claims Notices

– PDDRP (Post-Delegation Dispute Resolution Policy)

– RRDRP (Registry Restriction Dispute Resolution Procedure)

©2012 Knobbe Martens, Olson & Bear, LLP all rights reserved. ©2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15

Filing Objections


Public Objection

• Four objection types:

– String Confusion

– Legal Rights Objection

– Limited Public Interest (morality and public order)

– Community Objection

• Objection period runs from May 1, 2012 - December 1, 2012

• Objections heard by specialized Dispute Resolution Service Providers (DRSPs)


String Confusion

• Existing TLD operator or gTLD applicant in current round may file objections

• If applied for string (.whatever) is confusingly similar to:

– Existing TLD (application will be rejected)

– Another applied-for gTLD string (applications will be placed in a contention set - contention resolution procedure)

• Criteria for string confusion:

– String confusion exists where a string so nearly resembles another that it is likely to deceive or cause confusion

– Confusion must be probable, not merely possible, in the mind of the average, reasonable Internet user

– Mere association is insufficient

• Objection heard by International Centre for Dispute Resolution


String Confusion

• Bulgaria ccTLD IDN application for .бг was rejected because of visual similarity with .br

• EURid (.EU Registry) is still trying for .ευ (in Greek script) and .еу (in Cyrillic script) – both were rejected by ICANN as confusingly similar to .eu (in Latin script)


Legal Rights Objection

• Rightsholders may file objections

– Registered and unregistered trademarks

– IGO name

– Agencies of the UN

– Organizations having observer status at the UN

• Objections heard by WIPO Arbitration and Mediation Center



• Objections based on Legal Rights will consider the following (non-exclusive) factors:

– Whether the applied-for gTLD is identical or similar, in appearance, sound, or meaning to the objector’s existing mark

– Whether the objector’s acquisition, use, and rights in the mark are bona fide

– Whether (and to what extent) there is recognition of the relevant public of the sign corresponding to the gTLD as the mark of the objector, of the applicant, or of a third party



• Legal Rights Objections will consider the following (non-exclusive) factors:

– Whether the applicant’s, at the time of application for the gTLD, had knowledge of the objector’s mark, or could not have reasonably been unaware of objector’s mark

– Whether the applicant has engaged in a pattern of conduct whereby it applied for or operates TLDs or registrations in TLDs which are identical or confusingly similar to the marks of others

– Whether the applicant has used, or has made demonstrable preparations to use, the sign corresponding to the gTLD in connection with a bona fide offering of goods, services, or information in a way that does not interfere with the exercise by the objector of its rights



– Whether applicant has marks or other intellectual property rights in the sign corresponding to the gTLD

– Whether applicant’s acquisition of such a right in the sign and use of the sign have been bona fide

– Whether applicant’s purported or likely use of the gTLD by the applicant is consistent with such acquisition or use

– Whether applicant has been commonly known by the sign corresponding to the gTLD, and if so, whether any purported or likely use of the gTLD by the applicant is consistent therewith and bona fide

– Whether applicant’s intended use of the gTLD would create a likelihood of confusion with the objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD


Limited Public Interest

• No limitation on who may object

• “Quick Look” designed for early conclusion of frivolous and/or abusive objections

• Objective is determine whether an applied-for gTLD is contrary to general principles of international law for “morality and public order”

• Objections heard by International Center of Expertise of the International Chamber of Commerce


Community Objection

• Established institutions associated with a clearly delineated community may object

• Criteria:

– The community invoked by the objector is a clearly delineated community; and

– Community opposition to the application is substantial; and

– There is a strong association between the community invoked and the applied-for gTLD string; and

– The application creates a likelihood of material detriment to the rights or legitimate interests of a significant portion of the community to which the string may be explicitly or implicitly targeted.

• Objections heard by International Center of Expertise of the International Chamber of Commerce


Rights Protection Mechanisms


Rights Protection Mechanism

• RPMs for second-level domains in new gTLDs

– Trademark Clearinghouse

• Trademark Claims Service

• Sunrise Registrations

– Uniform Rapid Suspension (URS)

– Post-Delegation Dispute Resolution Procedure (PDDRP)

• Top Level

• Second Level

– Registry Restriction Dispute Resolution Procedure (RRDRP)

– Uniform Dispute Resolution Policy (UDRP)


Trademark Clearinghouse

• Central repository of authenticated trademark information

– Primarily used to support pre-launch Trademark Claims and Sunrise Registrations and Dispute Resolution Policies

• The standards for inclusion are as follows:

– Nationally or regionally registered word marks

– Any word mark that has been validated through a court of law or other judicial proceeding

– Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.

– Other marks that constitute intellectual property

– Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation or cancellation proceedings


Trademark Claims Service

• Applicable only in the first 60 days of general registration

• In the case where a domain is submitted for registration in a new gTLD and is identical to an authenticated trademark within the Clearinghouse, the Trademark Claims service will provide notification to the prospective registrant and confirm that:

– (a) the prospective registrant has received notification that the mark(s) is included in the Trademark Clearinghouse

– (b) the prospective registrant has received and understood the notice

– (c) to the best of the prospective registrant’s knowledge, the registration and use of the requested domain name will not infringe on the rights that are the subject of the notice

• If the domain in question is registered, the rights owner will be promptly notified


Sunrise Registration

• Sunrise registration periods provide rightsholder with priority registration

• Assuming that eligibility requirements are met, Sunrise Registrations will also be made available to all trademark holders in the Clearinghouse

• Notices will be provided to all trademark holders in the Clearinghouse if someone is seeking a Sunrise Registration.

– Conflicts that arise may be subject to a Sunrise Dispute Resolution Policy (SDRP).


Uniform Rapid Suspension (URS)

• The URS system is designed to provide a cost-effective, expedited process to address issues of infringement and abuse

• Form complaints are filed electronically and are designed to be as simple and formulaic as possible.

• The complainant may submit no more than 500 words of explanatory free-form text

• Fees “expected” to be in the range of US $300 per proceeding

• A limited “loser pays” model has also been adopted for URS complaints listing 15 or more disputed domain names will be subject to a Response Fee which is refunded to the prevailing party


URS

• Important: domains are only suspended for the remainder of their current registration term, or for an additional year at current market registration rates

• Important: domains become available for registration again after suspension

• Important: domains are likely to be registered again, resulting in a cycle of watching and suspending


Uniform Domain Name Dispute Resolution Policy (UDRP)

• Designed for disputes concerning an alleged abusive registration of a domain name

• Abusive registrations are those that meet the following criteria:

– The domain name registered by the domain name registrant is identical or confusingly similar to a mark in which the complainant (the person or entity bringing the complaint) has rights

– The domain name registrant has no rights or legitimate interests in respect to the domain name in question

– The domain name has been registered and is being used in bad faith


Post-Delegation Dispute Resolution Procedure (PDDRP) - Top Level

• Compliant procedure for a string “right of the dot”

• Rightsholders have the ability to file a complaint if the gTLD string (to the “right of the dot”) is identical or confusingly similar to the complainant’s mark and the registry is:

– (a) taking unfair advantage of the distinctive character or the reputation of the complainant's mark; or

– (b) impairing the distinctive character or the reputation of the complainant's mark; or

– (c) creating a likelihood of confusion with the complainant's mark


Post-Delegation Dispute Resolution Procedure (PDDRP) - Second Level

• Compliant procedure for a string “left of the dot”

• Rightsholders may file complaints against registries who have acted in bad faith with the intent to profit from the systematic registration of infringing domains at the second level (to the “left of the dot”).

• Examples of infringement include:

– registries with a pattern or practice of actively and systematically encouraging registrants to register domain names and to take unfair advantage of the trademark to the extent and degree that bad faith is apparent

– registries with a pattern or practice of acting as the registrant or beneficial user of infringing registrations in order to monetize and profit in bad faith


PDDRP

• Burden of proof is on the complainant

• Complaint can be no longer than 5,000 words and 20 pages (excluding attachments)

• Remedies include:

– requiring the registry to implement measures to protect against allowing future infringing registrations

– the suspension of accepting new domain name registrations until violations are cured

– termination of a Registry Agreement (in extraordinary circumstances)


Registry Restriction Dispute Resolution Procedure (RRDRP)

• Compliant procedure for community-based gTLDs

• Complainant asserts that it is “a harmed established institution as a result of the community-based gTLD registry operator not complying with the registration restrictions set out in the Registry Agreement”

– TLD operator violated the terms of the community-based restrictions in its agreement

– Measureable harm to the complainant and the community named by the objector


Q & A





Jeff Van Hoosear [email protected]

949.721.5274

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The New gTLD Program: What, When, and Why

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