New Generic Top Level Domain (gTLD) Program
In a special meeting in Singapore on June 20th, the ICANN Board of Directors voted to adopt a new generic Top Level Domain (gTLD) program, concluding six years of development.
This program is expected to introduce hundreds of new domains, such as .shop, .green, .[brand], etc., to the existing 22 top level domains (e.g., .com, .net., .info, .biz) by next year, fundamentally changing the internet and the landscape for trademark owners.
There will be various types of new top level domains, such as keyword domains (.green, .shop, .toys, .hotel), place domains (.nyc, .berlin), as well as brand domains (.apple, .ibm, .canon).
Although some details of the program are still subject to change, the program is sufficiently outlined to enable trademark owners to formulate their brand protection strategies in this new domain landscape.
Adopting a .brand domain
Some brand owners have already publicly indicated their intentions to create their own .brand domain name, such as .canon and .deloitte. The application process is outlined in the ICANN Applicant Guidebook. The application fee payable to ICANN is $185,000 but the entire application process, including anticipated outside consulting fees, is anticipated to be between $500k and $1m in the first year.
A .brand domain can offer many opportunities to a brand owner, such as better control of marketing and security. Applying in the first round may also increase the chances of successful acquisition of the .brand domain since once a new domain is approved, confusingly similar domains will not be allowed (if .bayern is approved for Bavaria, .bayer for Bayer AG would never be available).
Rights Protection Mechanisms
In addition to the traditional Uniform Dispute Resolution Procedure (UDRP), the administrative proceeding currently available against infringing gTLD domain names, the new program introduces some added protections for brand owners.
Intellectual Property Clearinghouse & Sunrise
Each new gTLD must utilize a Sunrise Period to allow trademark owners the ability to apply for their trademarks in the new gTLD, if appropriate. In addition, a Trademark Clearinghouse will be established in which trademark owners may record their rights and they will be notified when infringing domains are registered in the new gTLDs
Uniform Rapid Suspension
A new type of proceeding, called the Uniform Rapid Suspension proceeding (URS) will be introduced that will be similar to the Uniform Dispute Resolution Policy procedure (UDRP) except that the URS remedy will be the suspension of the domain name for the duration of its registration period, rather than its transfer or cancellation as under the UDRP.
Post-delegation Dispute Resolution Procedure
The new program will also introduce a Post-delegation Dispute Resolution Procedure (PDDRP) whereby a trademark owner may file a complaint against a domain name registrar for engaging in a pattern of bad faith exploitation of domain names that conflict with the owner’s trademark. The PDDRP can potentially suspend a registrar’s business for such activity.
As the new gTLD program is finalized, we will be publishing more information on this website and email news bulletins discussing the steps trademark owners may wish to take to try to protect and defend their trademarks in the face of this new gTLDs regime.