What it Means for Seattle Businesses’ Brands and Trademarks
PART I
(of a two part series)
Every day there are 50,000 new domain names coming online. The number of internet users globally will double to over 3 billion by 2015 and internet commerce is expected to be $1.4 Trillion by 2015. To address the increase in internet traffic, on January 12, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) ICANN opened the application window for its new Generic Top Level Domain program. The new program allows successful applicants to run their own domain registry (i.e. .wine). Seattle businesses need to pay attention or they risk getting left behind. Part I, in this two part series, gives an overview of the new gTLD program, key dates Seattle businesses need to be aware of and why the new gTLD program is a concern for Seattle businesses worried about protecting their brand and trademarks. Part II will cover key questions Seattle businesses may have regarding the effect of the new gTLD program. For example, could a business tie up a new extension like .movie or .wine? Could that business then decide who can obtain a new domain name under the extension? How will trademarks be affected? Can trademark holders object to a new top level domain? For answers to these questions stay tuned for Part II in this two part series on the new gTLD program.
Current Top Level Domains
Background
The Internet Corporation for Assigned Names and Numbers (ICANN) was formed in 1998 as a not-for-profit public-benefit corporation. It oversees a number of Internet-related tasks previously performed directly on behalf of the U.S. government. One of ICANN’s Internet-related tasks is the management of generic top-level domain names (gTLD’s).
What is a gTLD?
The acronym gTLD stands for Generic Top Level Domain. In Layman terms it is what comes after the dot as in ‘com’ in www.seattlepi.com. Thus ‘.com’ is a gTLD, as are ‘.net’, ‘.org’, ‘.gov’ and ‘.edu’. A gTLD is not a domain name, it is only the extension ending. Presently there are 22 gTLDs. On January 12, 2012, ICANN began a new gTLD program.
What is the New gTLD Program?
The new gTLD program allows organizations globally to apply for the right to operate a new gTLD registry of their choosing and introduce it for use on the internet. The new gTLDs will be expanded to include all types of words including terms from many different languages and can include words in non-Latin languages, such as Cyrillic, Chinese or Arabic for example. They are expecting between 300 to 1000 new gTLD applications. The New gTLD Applicant Guidebook is 360 pages long and details the New gTLD Application Process. Applicants for New gTLDs will have to pay $185,000US application fee and undergo extensive evaluation for technical, financial, and administrative qualifications to operate a gTLD registry in a manner that supports the stability and security of the internet. If an applicant is successful they then will need to pay an additional $25,000 each year.
a. Key Dates
On January 12, 2012, ICANN opened the application window for its new Generic Top Level Domain program. The program will include evaluation, resolution, and delegation and will take approximately 8 – 18 months to complete, depending upon the type of application and the level of objection or contention. It is expected that the public will see New gTLDs available for distribution and use in 2013.
The following are some key dates that Seattle businesses should keep in mind regarding the new gTLD Program:
• April 12, 2012: New gTLD application window closes.
• Early May, 2012: Public Application Information will be posted to ICANN’s website.
• From April through November, Application Review, Initial Evaluation and an Objection Filing period will occur.
b. The Necessity to Stay Diligent
Brand owners should review the posted applications to monitor for possible infringement. Any dispute resolution proceedings must be based on one of the following four criteria, and filed with the specific organization contracted to handle the dispute:
• String Confusion Objections – objector must be a current TLD operator or gTLD applicant in the same round.
• Legal Rights Objections – objector must be a legal rights owner whose rights are being infringed.
• Limited Public Interest – objections may be filed by any member of the public.
• Community Objections – objector must be an established institution clearly defined with a community.
The Concern for Seattle Business’s Brands and Trademarks
Internet users can expect to see domain names such as www.hotels.vegas, www.wellsfargo.bank, www.majestic.film, www.seattlemodern.art and many more. The increase in the number of gTLDs will have many implications and every internet user will be impacted, especially businesses small and large. For example, a successful applicant to the program may obtain the .wine gTLD and start selling second-level domains (ie. www.coveyrun.wine). The selling of second-level domains will likely create new internet domain squatters that infringe trademark rights of legitimate companies. Companies need to monitor the sale and use of domain names under the new gTLD’s for potential intellectual property infringements.
Conclusion
The new Generic Top Level Domain program started on January 12, 2012. The new program allows successful applicants to run their own domain registry (i.e. .wine). The application window closes in May 2012.
It is important for all businesses to begin evaluating the potential implications of the gTLD program. If you or your company have any questions regarding the protection of your brand and or trademark, seek an experienced Intellectual Property Attorney like McCormack Intellectual Property.
Special Thanks to Eric Harrison our 2011 summer associate who will soon graduate from the University of Washington School of Law.
ABOUT COPYRIGHT COW™
Copyright Cow™ is the Blog and alter-ego-Blogger name for Timothy B. McCormack, a well established and successful Seattle-based intellectual property, technology and business lawyer.
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This blog provides is not intended to give legal advice and is not a substitute for the same; if the reader has a concern they should contact a knowledgeable attorney.
Article source: http://blog.seattlepi.com/timothymccormack/2012/02/23/changes-to-internet-domain-name-extensions/. Creative Commons (CC)
