Crossfire

Matheson’s technology and IP law blog

The long roll out begins – Are brand owners prepared?

October, 2013

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Wednesday the 23rd of October was an exciting and historic day for the internet as the first four domains from ICANN’s New Generic Top-Level Domains (gTLDs) Program were cleared to proceed to delegation. This is the first step in what will be a measured roll out of the new gTLDs. The four newly delegated gTLDs are in Arabic, Cyrillic and Chinese scripts for “web / network”, “online”, “site”, and “game(s)” The delegation of these gTLDs marks the first time that words in non-Latin script (known as Internationalised Domain Names – IDNs) can be used in a gTLD. ICANN has previously been quoted as saying that “the delegation of non-Latin script gTLDs demonstrates ICANN’s efforts to create a globally-inclusive Internet, regardless of language or region”. This may give some insight into their reasons for delegating these particular gTLDs first.

Although these gTLDs have been delegated they cannot yet be released to the public. The “delegation” or introduction of a gTLD triggers a “Sunrise” period. This is mandatory and gives trade mark holders an opportunity to seek priority registration of identical second-level domains corresponding to their marks. Following this mandatory 30 day “Sunrise” period a Registry can make the new gTLD available to the general public anytime at its discretion within the twelve month period after delegation.

In response to concerns regarding cybersquatting ICANN has set up a Trade Mark Clearinghouse in which trade mark owners can register their marks in order to receive notification of identical domain name registrations. Confusingly similar domain name registrations will not be notified and therefore for many brand owners it will be necessary to engage a commercial watching service.

ICANN’S new, faster and supposedly more cost effective dispute resolution system is called the Uniform Rapid Suspension System (URS). This system only offers suspension and not transfer, and even then it could result in considerable delay based on the rules for the process and any subsequent appeal. Whether, for these reasons, it will ultimately prove more cost effective in the long run for trade mark owners remains to be seen. Our current thinking is that major brand owners will prefer the consistency and certainty of transfer under the existing UDRP system and the URS will be used only in the most obvious cases of cybersquatting and by smaller trade mark owners looking for a fast, temporary “fix”.

The gTLD Program was designed to facilitate a measured rollout of new domains so as not to disrupt the Domain Name System. ICANN recently said that its plan is to introduce the new gTLDs into the Internet “securely and steadily over the next few years”. Last week’s delegation of the first four domain names is therefore just the beginning of a long running programme to roll out the first tranche of new top level domains. Only time will tell what the uptake will be like and how much cybersquatting chaos may result for brand owners who now really must consider their strategy to combat cybersquatting. It will be an interesting year ahead in the domain name world.