Increase in number of top-level domain names
The Internet Corporation for Assigned Names and Numbers (ICANN), after six years of planning, finally approved plans to increase the number of top-level domain names (TLDs) on 20 June 2011. Applications for new TLDs will be accepted from 12 January 2012 to 12 April 2012 and will be granted on a first-come, first-served basis.
Top-level domain names
At present, there are 22 generic TLDs, for example .com, .org. and .net. However with ICANN’s new plan, there will be an unlimited number of possible TLDs that can be registered. Companies and organisations will be able to apply for TLDs of their own design, which may be an existing trade mark, such as “.cocacola” or “.kodak”, or which may be a descriptive reference, e.g. “.football”. Individuals and sole proprietorships will not be eligible to apply for a TLD.
The application process will be rigorous and will require significant financial resources, including an initial application fee of $185,000. Applicants for a TLD are, in essence, applying to function as domain name registries. Therefore applicants must obtain ICANN’s assessment of their technical compliance to act as a registry, to ensure that the registry’s functions protect registrants and maintain ICANN’s mission of ensuring the stability and security of the domain name service. The technical plan must be adequately resourced, with appropriate expertise and allocation of costs.
The application requirements include the applicant preparing at least a three year financial and business plan, providing evidence that the funds required for performing registry functions will be available and guaranteeing to fund such operations for at least three years. Applicants must also provide financial projections, describing and explaining costs and capital expenditures. Additionally, the applicant must explain the funding for setting up and operating the proposed registry.
Contingency planning must also identify any projected barriers, including legal and policy barriers, to implementing the business approach described in the application and how these affect costs, funding or timelines.
These onerous requirements should therefore discourage cybersquattters and opportunist domain name registrants, but that is not to say that disputes will not arise.
No two TLDs can be so similar that they risk confusion. If two or more TLDs are deemed confusing by ICANN, the conflict will be resolved by ICANN, by way of auction if necessary.
After the initial application period, all of the TLD applications will be listed publicly on ICANN’s website. This will give trade mark owners the opportunity to check whether any of the TLDs that are the subject of an application are of concern and to oppose the same if they feel there is a conflict.
There may be further application periods opened up for new TLDs at a later date, which could be used in the event the initial application period that runs to 12 April 2012 is missed, or if a decision was made to not apply for a TLD in this time. However, no firm date has been set for any further rounds of TLD applications.
Second level domain names
For those who choose not to apply for a TLD, there will still be the opportunity to obtain a new domain name registration based on one of the newly registered TLDs. A trade mark owner could apply for a domain name registration incorporating a new TLD, together with a second level domain, with the domain name registration including the existing trade mark.
Therefore if Kodak decided not to register a “.kodak” TLD but a third party did register this TLD, Kodak could still make use of the TLD by approaching this third party and obtaining consent for a domain name based on this TLD, e.g. for the domain name www.1camera.kodak. Equally, if a third party registered .camera as a TLD, Kodak could seek a registration using this TLD, e.g. for the domain name www.kodak.camera.
In order to combat trade mark infringement, all new TLD registries will be obliged to conduct sunrise periods, which will provide trade mark owners with the opportunity to register their mark as a domain name before a particular TLD becomes available to the public at large. To take advantage of this, trade mark owners will have to provide evidence of ownership of their trade mark, regardless of whether it is a registered or unregistered trade mark.
ICANN plans on establishing a trade mark clearinghouse, which will be a central repository where trade mark owners can file evidence of ownership of their trade marks. When filing an application for a domain name, a trade mark owner can then refer the TLD registry in question to the clearinghouse for the necessary evidence of the existing rights in the relevant trade mark. This should be particularly useful to companies wishing to participate in a number of sunrise periods.
In addition, trade mark owners who file evidence of their trade mark rights with the ICANN clearinghouse will automatically receive notice whenever a domain identical to their trade mark is registered during the launch of a new TLD.
Complaints procedure
ICANN is also planning to implement a complaints procedure. It is intended that this will include an expedited process to allow the suspension of domain names that are identical to, or confusingly similar to, a trade mark.
A complaints mechanism will also be available under which trade mark owners will be able to report TLD registries that consistently permit third parties to register domain names that infringe trade mark rights.
Please contact Lisa King (lisa.king@barkerbrettell.co.uk) or Lucy Walker (lucy.walker@barkerbrettell.co.uk) if you require any further information on this topic.
