©2014. Published in Landslide, Vol. 6, No. 6, July/August 2014, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
Over the next few years, the Internet will be adding somewhere around 1,400 new “generic top-level domains” (new gTLDs). A top-level domain is the part of the Internet address appearing to the right of the last dot. Historically it has been things like .com, .net, and .org. When the new gTLDs come online, they will include geographic names like .tokyo and .london; community names like .gay and .thai; generic names like .furniture and .parts; and brand names like .canon and .bmw. Navigating the Internet will be so much easier, so the argument goes.
But rights holders, that is, owners of trademark rights, are concerned that the large number of new entrants into the Internet domain space will not simplify things for them but rather will complicate their lives and impose a massive new burden in terms of enforcement expense. This may ultimately prove to be true, but ICANN, the nonprofit organization responsible for assigning names and numbers on the Internet, has come up with some ways that may ease the burden. New rights protection mechanisms available only for the new gTLDs include a Uniform Rapid Suspension System for domains that are clearly instances of cybersquatting, and the use of a centralized Trademark Clearinghouse to ensure that participating marks are included in the mandatory sunrise and trademark notice periods for each new gTLD. In addition, with so many new registry operators, there are new mechanisms for addressing their mishandling of the gTLDs under their care.
The flood is coming, and once it arrives nothing will return the world to its antediluvian state. But knowing and understanding the broad strokes of the new gTLDs in general, and these new rights protection mechanisms in particular, will be crucial for rights holders looking for dry ground.
First, a little background on the genesis of the new gTLDs. In the beginning, so to speak, it was envisioned that the Internet would have some marginal utility among universities, government agencies, and the military, but would be largely irrelevant to the public. The first gTLDs were thus .edu, .gov, and .mil. It was assumed nongovernmental organizations and computer systems administrators would also find a use for the Internet, so .org and .net were created as well. Almost as an afterthought, the .com gTLD was added on the off chance some free thinker might want to put the Internet to commercial use. Before long it became apparent that the .com and, to a lesser degree, the .net and .org spaces were the premium lots on the Internet block.
But two problems arose rather quickly. First, cybersquatting—a term that did not exist prior to the late 1990s. Enterprising souls (read: people looking to make a lot of money without doing any actual work) would register well-known trademarks as domain names, then contact the owner of the mark with an offer to sell the domain name to the mark owner for an amount many orders of magnitude beyond the original acquisition price. The problem was widespread, but there was no easy means of addressing it if you were the mark owner. Court action was correctly viewed as disproportionately expensive and protracted, and the legal footing uncertain. Most courts at the time treated domain names as mere Internet addresses, incapable of signifying a source of goods or services. So ICANN developed an alternative in 1999 known as the Uniform Domain Name Dispute Resolution Policy (UDRP). More on the UDRP later.
The second problem was that, even putting aside the cybersquatting problem, Internet real estate became very scarce very fast. There can be just one “delta.com,” for example, and for several years it did not belong to the well-known airline but rather to another entity having an equally legitimate claim to the name. The airline was relegated to “delta-air.com.” There were thus an ever-increasing number of less than intuitive Internet addresses. This was the genesis of the idea for expanding the top-level domain space. ICANN introduced seven additional gTLDs in 2000 (including .info and .biz) and another eight in 2004 (including .mobi), but the process that would culminate in the current round of nearly 2,000 new gTLD applications began in 2005. The idea was and remains that “[t]he new gTLD program will open up the top level of the Internet’s namespace to foster diversity, encourage competition, and enhance the utility of the [domain name system].”1
New gTLD Applications and Objections
New gTLD applications were accepted between January 12 and March 29 of 2012. The number of applications received—1,930—was rather shocking given the $185,000 filing fee and the proof required of each applicant to establish the requisite technical and financial means of operating a gTLD registry on a long-term basis. Of this number, several have been withdrawn for one reason or another, and over one-third are part of some 200 “string contention sets.”2 These are sets of applications for the same or substantially the same gTLD “string.” There are, for example, 13 applications for .app, 11 for .home and .inc, and 10 for .art. Other contention sets include .blog, .book, .shop, .llc (nine applications each), and .music (eight applications).3 Following examination and resolution of objections, described below, remaining contention sets will likely be resolved by auction, except that applications designated (by the applicant) as “community” will receive preferential treatment (because they have committed to operating “for the benefit of a clearly delineated community,” such as .catholic).4
There is also, for the first time in Internet history, the possibility of gTLDs in non-Latin script, such as Japanese, Chinese, Arabic, and Russian. There were 116 applications for these so-called “Internationalized Domain Names” initially filed.5 Indeed, as of this writing, several have been delegated to the “root zone” (the top-level zone of the Internet domain name system) and are in their respective sunrise phases.6
The new gTLD application process remains ongoing for most of the applicants. Of the 1,930 applications originally filed, 1,422 are still undergoing review, and 304 (as of this writing) have been delegated to the root zone (meaning they will be live relatively soon, if not live already, such as .holdings, .ventures, and .bike).7 While many applications are simply awaiting their turn in line, or, as mentioned above, are part of a string contention set, a considerable number have been held up by one or more of four varieties of objections.8 A “legal rights” objection asserts the applied-for gTLD violates the objector’s trademark rights. A “string confusion” objection contends the applied-for gTLD is the same as or confusingly similar to another application or to an existing gTLD. A “community” objection argues that a significant portion of a clearly delineated community opposes the application and would suffer material detriment if it were allowed. Finally, a “limited public interest” objection contends the applied-for gTLD contradicts generally accepted legal norms of morality and public order recognized under principles of international law.9 The window for submitting objections closed over a year ago, and most of the objections filed have by now been decided.
The upshot of all of this is that there are hundreds of new gTLDs coming in the next few months, with several hundred more to come in the months and years that follow. They will have been vetted quite thoroughly and held up to public critique and objection. Many may disagree with ICANN’s decision to implement them, and may even question their legitimacy or ICANN’s authority. But they are here, and by the time one of them becomes a problem for one of your clients, there will be no point in cursing the darkness of what has already been decided. Better to light a candle and use the rights protection mechanisms ICANN has provided.
Uniform Domain Name Dispute Resolution Policy
The UDRP is ICANN’s oldest and most tested policy. It has served the rights-holder community well since taking effect in 1999, and will have continued utility in the new gTLD regime. To call it a “policy” is something of a misnomer. All registries, registrars (e.g., GoDaddy), and registrants (i.e., domain name owners) are required by contract to submit to its terms for dispute resolution. This holds true for all of the “policies” described in this article.
ICANN enacted the UDRP at a time when blatant cybersquatting was rampant, so it is most effective when used to address situations that clearly are, or are very analogous to, instances of cybersquatting. A complainant under the UDRP has to establish three elements.10 First, the domain name at issue must be “identical or confusingly similar” to a mark in which the complainant has rights, either statutory or common law. If the latter, an evidentiary showing will be necessary, one sufficient to pass muster under the laws of the jurisdiction where the complainant uses its mark. The complainant must also show that the registrant lacks any legitimate rights or interests in the mark, and that the domain was registered and is being used in bad faith. Circumstances indicating bad faith registration and use are stated nonexhaustively in the policy as (1) ransoming (i.e., purchasing the domain form of another’s trademark then trying to sell it to the mark owner), (2) registration to prevent the mark owner’s registration, (3) registration to disrupt the business of the mark owner, and (4) registration intended to cash in on the mark owner’s goodwill.11 The complainant can “prove” the registrant’s lack of legitimate rights or interests by making a prima facie showing that no evidence suggests (1) the registrant had been preparing to use the name since prior to learning of the dispute, (2) the registrant is commonly known by the domain name, or (3) the registrant is making a legitimate noncommercial or fair use of the domain name with no intent to mislead or tarnish.12
There are implementing rules that provide things such as timing of responses, page limitations, and the like.13 The matter will be decided by a one– to three-person panel appointed by an ICANN-approved dispute resolution service provider, such as the National Arbitration Forum14 or the World Intellectual Property Association.15 A written decision will issue usually within six weeks of commencement. Remedies are limited to transfer or deletion of the registration.
There was considerable criticism of the UDRP when it was first adopted because of the “bad faith” component. The concern was that requiring proof of bad faith, even by the applicable preponderance of the evidence standard, would render the UDRP effectively useless. Time has shown quite the opposite to be true. UDRP proceedings are on the whole very complainant-friendly, and panels typically infer the requisite bad faith from circumstances such as the renown of the complainant’s mark or even the absence of any other legitimate reason presented by the respondent (i.e., why register this particular name if it did not come preloaded with the mark owner’s goodwill). When registrants do prevail, it is typically because they have registered a simple dictionary term and can show they have not sought to capitalize on any trademark rights the complainant may also happen to have in that term. In the case of “apple,” for example, a hypothetical registrant might prevail over Apple Inc.’s objection if the registrant’s website was dedicated to selling or discussing apples and not computers.
One drawback to the UDRP is that the prevailing complainant has to take over ownership of the domain, which can be an unwanted burden, or delete the registration, which means the same offending name will be available for some other party to register. On the other hand, many companies, especially those who sell goods via the Internet, have found the UDRP to be a very quick and efficient means of dealing with counterfeiters. It can be something of a whack-a-mole game, but eventually the serial UDRP complainant becomes too much trouble and the counterfeiters move on the next target.
If the UDRP works so well, what is the need for new rights protection mechanisms for the new gTLDs? The answer is simply a function of the numbers. If there will be about 1,400 new gTLDs entering the root zone over the next three to four years, there must be new tools designed to handle that kind of volume. Enter the Trademark Clearinghouse and the UDRP’s faster, cheaper cousin, the Uniform Rapid Suspension System.
The Trademark Clearinghouse (TMCH) allows holders of verified trademark rights to (1) participate in all new gTLD sunrise periods, which essentially grants a right of first refusal to rights holders across all of the coming new gTLDs; and (2) receive notice if a third party registers the mark as a domain name in any of the new gTLDs.16 A rights holder is any entity that (1) owns a nationally or regionally (i.e., multinationally) registered trademark appearing on that jurisdiction’s primary or principal register, (2) owns a mark that has been validated by a court or other tribunal, or (3) owns a mark protected by statute or treaty, such as “Olympic”17 or “Red Cross.”18 Applications that have not matured to registration will not suffice, nor will state registrations or claims of common law rights (unless validated by a court).19
The TMCH covers only domain names formed solely from the trademark itself, not those that simply might incorporate the mark. Certain leeway is granted for multiword marks, such that if the mark were EXAMPLE MARK, for instance, the protected domain names would include examplemark and example-mark.20 This limited coverage is something of a drawback to the TMCH, but on the other hand, having the TMCH decide where the line is for confusingly similar domain names and marks would be unworkably cumbersome. In any event, avenues exist for expanding the TMCH’s preemptive scope, such as the Domain Protected Marks List offered by some registries, discussed below, and the TMCH’s abused domain name labels program. An “abused domain name label” is one a court or a UDRP panel has held to be identical or confusingly similar to the verified mark registered with the TMCH.21 This provides a great added benefit to those who have liberally availed themselves of the UDRP over the years. These parties will be able to link up to 50 of the domain names they have already won to a single TMCH record.22
In practice, this is how the TMCH works. Suppose Duane owns a U.S. trademark registration for STORMY MONDAY. Duane registers his mark with the TMCH, and the TMCH verifies it and issues him a signed mark data (SMD) file. Duane watches the list of new gTLD sunrise dates,23 and when he sees .guitars, he uses his SMD file to register either stormymonday or stormy-monday, or both, as qualified “identical match” domain names during the .guitars sunrise period. If Duane decides not to register his mark in the .guitars gTLD, the stormymonday and stormy-monday domain names will remain available in the .guitars space, which means someone may try to register them. If that happens within the trademark claims service period—the first 90 days after the .guitars sunrise period ends (i.e., once public registration has opened)—the would-be registrant will receive a notice apprising it of Duane’s rights. If it proceeds to register the domain name despite that notice, Duane will receive a notice of registered name (NORN) informing him of the registration. If this same scenario happens after the first 90 days during the extended claims service period, Duane will receive the same notice, but the registrant will not receive the same warning.24
The point of the TMCH is thus to (1) authenticate records of trademark rights, and (2) serve as a central database for registries to access these records in order to provide the trademark claims service and extended claims service notices described above. It is not preemptive. That is, registration with the TMCH does not prevent a third party from registering your mark as a domain (but see Domain Protected Marks List, discussed below). Rather, it gives you the right to do so first, or, alternatively, gives you notice when others proceed to do so, which allows you to proceed with a UDRP or Uniform Rapid Suspension System case.25 More important, during the initial 90-day trademark claims service period, the fact that the registrant proceeded in the face of notice of your rights can be used to satisfy the bad faith prong of any UDRP or URS proceeding you may decide to pursue.
Domain Protected Marks List
New gTLD applicants are at their leisure to offer enhanced rights protection mechanisms, and at least two have chosen to do so, Donuts Inc.26 and Rightside.27 These two entities are offering a Domain Protected Marks List (DPML) program for all of the registries they have applied to operate. The DPML allows mark owners who are also TMCH participants to identify specific domain names for exclusion from the registry, so long as the domain names include the entirety of the mark. For example, Duane, the owner of the STORMY MONDAY mark, can register stormymondayblues or stormymondaysong on the DPML, which will result in these domain names being removed from the registry (for an agreed-upon period of time). The DPML service will be fairly significant because Donuts has applied for over 300 gTLDs28 and Rightside for 29.29 Other registry operators may follow suit.
Uniform Rapid Suspension System
The Uniform Rapid Suspension System (URS) is a major new remedy applicable only to domain names registered in the new gTLDs (although others can opt in, as the .pw country code gTLD has done).30 The URS policy31 is essentially the same as the UDRP, but is engineered to be applied only to the most clear-cut cases of cybersquatting and is available only for registered trademarks (or those recognized by court, treaty, or statute). The rules32 implementing the policy limit the submissions to 500 words or less, which must be entered into an online form (the UDRP, by contrast, involves a separate complaint document that can be structured in a way the submitter believes most persuasive). The filing fee for a URS claim is less that for a UDRP claim, and the decision time is about three weeks, or about half that of the UDRP. On the other hand, a URS claim is decided much like a summary judgment motion in that there can be no issues of material fact. Because it is intended to be applied only in the most egregious cases, the evidentiary burden is clear and convincing evidence, which is higher than the preponderance of the evidence standard required under the UDRP.
Something to consider if the facts equally support proceeding under both the URS and the UDRP is the nature of the remedy desired, because they differ. If you want to take over ownership of the domain, proceed under the UDRP. If you want the domain to be removed from the registry (for a defined period of time), use the URS. Proceeding with a URS claim simply because the facts support doing so could lead to headaches if your real desire is to take over ownership of the domain name at issue.
New gTLDs that survive the application process, run the gauntlet of application objections, and win out over similar strings in their contention sets are “delegated” to the root zone of the Internet. What happens if the winning registry operator engages in bad behavior from this point forward? Such matters are the focus of various Post-Delegation Dispute Resolution Procedures (PDDRP).33
New gTLD registry operators (formerly known as new gTLD applicants) are required to execute some form of the Registry Agreement (RA),34 which contains provisions requiring some things and proscribing others. The RA’s Specification 11, for instance, requires “generic term” registries (such as .parts and .camera) to be open to all registrants (rather than closed for the benefit of one company). Specification 9 allows a “.brand” gTLD to do the opposite, meaning BMW is allowed to operate .bmw for the sole use of its employees and affiliates and does not have to grant registrations to mere BMW enthusiasts and other members of the public. Other provisions require the use of registrars accredited under the 2013 Registrar Accreditation Agreement, as well as the use of the TMCH, URS, and the specific PDDRP discussed below. Over 150 registry operators have executed some form of the RA so far (many have agreed to additional conditions but none have been allowed to agree to fewer).35
The PDDRP trademark policy36 (required by the RA’s Specification 7) gives a mark owner a way to stop a registry operator who systematically promotes infringement at the second level (the domain name level, i.e., the “example” in “example.com”) by encouraging repeated infringing registrations. The Trademark PDDRP also allows a remedy where the gTLD is identical or nearly identical to the mark of another and the registry operator falsely holds itself out as being the mark owner or an affiliate. Special rules have been adopted regarding the procedure for securing the relief.37
Registry Restriction Dispute Resolution Policy
For new gTLDs that were self-designated as “community” and are thus required to operate for the benefit of a clearly delineated community, there is the Registry Restrictions Dispute Resolution Procedure (RRDRP).38 It allows members of that community to take action if the registry operator fails to restrict registration to members of the community or otherwise fails to operate the registry for the benefit of the community.39
Public Interest Commitment Dispute Resolution Policy
As mentioned above, Specification 11 of the RA requires compliance with a number of rules deemed to serve the public interest, such as maintaining open access to “generic term” registries and complying with the operator’s own undertakings stated in a separate public interest commitment (PIC) document. If the registry operator steps out of line, the Public Interest Commitment Dispute Resolution Policy (PICDRP) provides the remedy.40
Some examples may help at this point. Suppose your client is “Mountain Jam Skis,” maker of high-performance skis, bindings, and replacement parts. Mountain Jam Skis, also called MJS, has a few trademarks for skis and bindings, including FILLMORE, MOUNTAIN JAM, and MJS. Over the years, MJS has enjoyed multiple UDRP wins, including wins for the domain names fillmorerace and mountainjamslalom.
What if a counterfeiter or competitor attempts to register mountainjam.ski? This domain name is an exact match to one of MJS’s trademarks, so if MJS had registered the mark with the TMCH it could have secured the domain name during the .ski sunrise period and prevented the situation altogether. If MJS chose not to obtain the name during sunrise, it still would have received a NORN if a third party acquired the name. If the third party did so during the first 90 days after the gTLD opened to the public, it would have received a trademark claims notice. Even if MJS had chosen not to register its trademarks with the TMCH, it could proceed against the third party under the UDRP or URS. The benefit of TMCH registration is that the third party would have received a trademark claims notice prior to registration, meaning the bad faith component is more readily established, thus promoting a more straight and sure path to URS or UDRP victory.
What if a counterfeiter or competitor attempts to register fillmorerace.store? As noted above, this is one of the domain names MJS had won in a prior UDRP proceeding, which means it would qualify under the TMCH as an abused domain name label. If MJS had registered this abused domain name label with the TMCH, the same analysis would apply as that stated above for mountainjam.ski.
What if MJS is denied registration of mountainjam.store by the .store registry operator? The .store gTLD is clearly generic, so the operator would be in violation of Specification 11 of its registry operator agreement. The PICDRP would provide the relief.
What if MJS rival Snowblind Ski Co. operates the (fictitious) .snowblind new gTLD and registers mjs.snowblind and fillmore.snowblind? Doing so would show a pattern of fostering infringing conduct. While more would be required to establish Snowblind’s intent, the Trademark PDDRP would provide the avenue to begin addressing this bad behavior.
What if MJS wants to block registration of mountainjamskis in the .parts new gTLD? This is one of the gTLDs that offers the DPML service. So long as MJS had registered the MOUNTAIN JAM mark with the TMCH, it could select mountainjamskis as a domain name it would like removed from the .parts registry through the DPML service. Doing so comes at a premium price and is not permanent.
The face of the Internet is about to change forever. Whether we all change with it and use the new gTLDs in the way ICANN has envisioned remains to be seen. In the meantime, those who build their levees and prepare will be glad they did if the flood turns out to be even a fraction of the Biblical scale expected.
2. Accounting for the withdrawn applications and the 630 applications involving string contentions, and adding back in one application for each of the 200 gTLD strings involved in a contention set yields the estimated total of 1,400 new gTLDs stated at the outset of this article.
3. See New gTLD Current Application Status, ICANN, https://gtldresult.icann.org/application-result/applicationstatus (last visited Apr. 17, 2014).
4. gTLD Applicant Guidebook, supra note 1, at 1-13, – 26.
5. See New gTLD Current Application Status, supra note 3.
6. See Delegated Strings, ICANN, http://newgtlds.icann.org/en/program-status/delegated-strings (last visited Apr. 17, 2014).
7. See id.
8. See Objection Determinations, ICANN, http://newgtlds.icann.org/en/program-status/odr/determination (last visited Apr. 17, 2014).
11. Id. ¶ 4.b.
12. Id. ¶ 4.c.
13. Rules for Uniform Domain Name Dispute Resolution Policy, ICANN (Mar. 1, 2010), http://www.icann.org/en/dndr/udrp/uniform-rules.htm.
14. See The UDRP, Nat’l Arb. F., http://domains.adrforum.com/main.aspx?itemID=276&hideBar=False&navID=202&news=26 (last visited Apr. 17, 2014).
16. See Trademark Clearinghouse for Rights Holders: General Information, ICANN, http://newgtlds.icann.org/en/about/trademark-clearinghouse/rights-holders (last visited Apr. 17, 2014).
17. 36 U.S.C. § 220506(c).
18. 18 U.S.C. § 706a; see Trademark Clearinghouse, Trademark Clearinghouse Guidelines 8–9 (2013), http://trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.2_0.pdf.
19. Trademark Clearinghouse Guidelines, supra note 18, at 8–9.
20. Id. at 21–22.
21. Id. at 19–20.
22. Id. at 19.
23. TLD Startup Information—Sunrise and Claims Periods, ICANN, http://newgtlds.icann.org/en/program-status/sunrise-claims-periods (last visited Apr. 17, 2014).
25. See Trademark Clearinghouse: Rights Protection Mechanism Requirements, ICANN (Sept. 30, 2013), http://newgtlds.icann.org/en/about/trademark-clearinghouse (follow “View the Final RPM Requirements” hyperlink).
27. Top Level Domains: Domain Protected Marks List, Rightside, http://rightside.co/rightside-registry/dpml-rights-protection/ (last visited Apr. 17, 2014).
29. Top Level Domains: Our Portfolio, Rightside, http://rightside.co/rightside-registry/tld-portfolio/ (last visited Apr. 17, 2014).
34. Registry Agreement, ICANN (Jan. 9, 2014), http://www.icann.org/en/about/agreements/registries (follow any “Redline” hyperlink under “Base Registry Agreement – Updated 09 January 2014”).
35. See Registry Agreements, ICANN, http://www.icann.org/en/about/agreements/registries (last visited Apr. 17, 2014).
36. Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP), ICANN (June 4, 2012), http://www.icann.org/en/resources/registries/pddrp (follow “Review the PDDRP” hyperlink).
37. PDDRP Rule, ICANN, http://www.icann.org/en/resources/registries/pddrp (follow “Review the PDDRP Rules” hyperlink) (last visited Apr. 17, 2014).
38. Registry Restrictions Dispute Resolution Procedure (RRDRP), ICANN (June 4, 2012), http://www.icann.org/en/resources/registries/rrdrp (follow “Review the RRDRP” hyperlink).
39. RRDRP Rules, ICANN, http://www.icann.org/en/resources/registries/rrdrp (follow “Review the RRDRP Rules” hyperlink) (last visited Apr. 17, 2014).
40. Public Interest Commitment Dispute Resolution Procedure, ICANN (Dec. 19, 2013), http://www.icann.org/en/resources/registries/picdrp (follow “Review the PICDRP” hyperlink).