The New gTLD Program: What, When, and Why

The New gTLD Program: Jeff Van Hoosear
April 16, 2012
What, When, and Why

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Overview

• New gTLD program: What, When, and Why
• Anticipated gTLDs
• Important dates
• Preparing for the new gTLDs
• Rights Protection Mechanisms (RPMs)
• Questions? (don’t make them too hard)
• http://newgtlds.icann.org/en
• http://newgtlds.icann.org/en/applicants/agb

© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2

WHAT is a gTLD?

• A gTLD is not a domain name.
• A gTLD is a name space
• A gTLD is part of the Internet infrastructure (like .com, .net, .de)
• A new gTLD is one of two types: Community-Based and Standard
• A new gTLD can not have numbers or dashes
• A new gTLD must have three or more distinct characters
• A new gTLD can not be the name of a country or territory
• A new gTLD must not be on ICANN’s reserved list (34 names)


Community-Based

• Only open to applicants of a clearly identified, organized, and
pre-established community


Standard

• Open to any type of applicant


WHEN does the new gTLD program happen?

• Registration Closes: March 29, 2012
• Application Period Closes: April 12, 2012 (ext. to April 20, 2012)
• “Reveal Day”: May 1, 2012
• Application Comment Process Closes: June 30, 2012
• Objection Period Closes: November 1, 2012
• Initial Evaluation Begins: June 12, 2102
• Initial Evaluation Ends: November 12, 2012
• Last Day to Request Extended Evaluation: November 29, 2012
• Phase for Complex Applications: November 30, 2012
• New gTLDs available: January 2013 (?)


WHY is there a new gTLD program?

• Growth?: 22 gTLDs to 1000+ gTLDs
• Change?: apps, social media, e-tailers
• Innovation?: new ideas, new services, new competition, new fees
• IP law needs more acronyms?: RPM, URS, PDDRP, RRDRP


“Geographical” TLDs

• .athens • .california • .hamburg • .madrid
• .berlin • .chicago • .hongkong • .miami
• .boston • .dallas • .london • .nyc

Such gTLDs will need “governmental approval”


“Generic” TLDs

• .artist • .green • .poker
• .bike • .love • .rugby
• .cats • .peace • .wine


“Brand” TLDs

• .canon
• .hitachi
• .google
• .youtube

Not many companies have publicly announced
plans to register

Pepsi and Facebook stated they would not register


Decisions, Decisions, Decisions

• Is it worth applying?
– application fee: $185,000
– total estimated cost of application process: $500,000
– total estimated costs commitment: $2,000,000
• Is there any contention?
– American Airlines/American Apparel/American Express
• Is there a real business reason?
– control over dealers, agents, resellers, distributors
– ability to designate a secure space for consumers (banking,
shopping, studying)
– inability to register “.com” domains
• Is what competitors do a concern?


Important Dates


Preparing for the new gTLDs

• Review the submitted applications: May 1, 2012
– Consider summiting Comments or filing Objections
• Prepare for the launch of new registries starting in 2013
– Submit information to Trademark Clearinghouse
– Budget for new registrations
– Review your domain holdings
– Review your policies and procedures for monitoring and
policing brand abuse/infringement
• Understand the new RPMs (Rights Protection Mechanisms)
– URS (Uniform Rapid Suspension)
– Trademark Claims Notices
– PDDRP (Post-Delegation Dispute Resolution Policy)
– RRDRP (Registry Restriction Dispute Resolution Procedure)


Filing Objections

©2012 Knobbe, Martens, Olson & all rights reserved.
©2012 Knobbe Martens, Olson & Bear, LLPBear, LLP all rights reserved. 15

Public Objection

• Four objection types:
– String Confusion
– Legal Rights Objection
– Limited Public Interest (morality and public order)
– Community Objection
• Objection period runs from May 1, 2012 - December 1, 2012
• Objections heard by specialized Dispute Resolution Service
Providers (DRSPs)


String Confusion

• Existing TLD operator or gTLD applicant in current round may file
objections
• If applied for string (.whatever) is confusingly similar to:
– Existing TLD (application will be rejected)
– Another applied-for gTLD string (applications will be placed
in a contention set - contention resolution procedure)
• Criteria for string confusion:
– String confusion exists where a string so nearly resembles
another that it is likely to deceive or cause confusion
– Confusion must be probable, not merely possible, in the mind
of the average, reasonable Internet user
– Mere association is insufficient
• Objection heard by International Centre for Dispute Resolution


String Confusion

• Bulgaria ccTLD IDN application for .бг was rejected because of
visual similarity with .br

• EURid (.EU Registry) is still trying for .ευ (in Greek script) and .еу
(in Cyrillic script) – both were rejected by ICANN as confusingly
similar to .eu (in Latin script)


Legal Rights Objection

• Rightsholders may file objections
– Registered and unregistered trademarks
– IGO name
– Agencies of the UN
– Organizations having observer status at the UN

• Objections heard by WIPO Arbitration and Mediation Center



• Objections based on Legal Rights will consider the following
(non-exclusive) factors:
– Whether the applied-for gTLD is identical or similar, in
appearance, sound, or meaning to the objector’s existing
mark
– Whether the objector’s acquisition, use, and rights in the mark
are bona fide
– Whether (and to what extent) there is recognition of the
relevant public of the sign corresponding to the gTLD as the
mark of the objector, of the applicant, or of a third party



• Legal Rights Objections will consider the following (non-
exclusive) factors:
– Whether the applicant’s, at the time of application for the
gTLD, had knowledge of the objector’s mark, or could not
have reasonably been unaware of objector’s mark
– Whether the applicant has engaged in a pattern of conduct
whereby it applied for or operates TLDs or registrations in
TLDs which are identical or confusingly similar to the marks of
others
– Whether the applicant has used, or has made demonstrable
preparations to use, the sign corresponding to the gTLD in
connection with a bona fide offering of goods, services, or
information in a way that does not interfere with the exercise
by the objector of its rights



– Whether applicant has marks or other intellectual property
rights in the sign corresponding to the gTLD
– Whether applicant’s acquisition of such a right in the sign and
use of the sign have been bona fide
– Whether applicant’s purported or likely use of the gTLD by the
applicant is consistent with such acquisition or use
– Whether applicant has been commonly known by the sign
corresponding to the gTLD, and if so, whether any purported or
likely use of the gTLD by the applicant is consistent therewith
and bona fide
– Whether applicant’s intended use of the gTLD would create a
likelihood of confusion with the objector’s mark as to the source,
sponsorship, affiliation, or endorsement of the gTLD


Limited Public Interest

• No limitation on who may object

• “Quick Look” designed for early conclusion of frivolous and/or
abusive objections

• Objective is determine whether an applied-for gTLD is contrary
to general principles of international law for “morality and public
order”

• Objections heard by International Center of Expertise of the
International Chamber of Commerce


Community Objection

• Established institutions associated with a clearly delineated
community may object
• Criteria:
– The community invoked by the objector is a clearly delineated
community; and
– Community opposition to the application is substantial; and
– There is a strong association between the community invoked
and the applied-for gTLD string; and
– The application creates a likelihood of material detriment to the
rights or legitimate interests of a significant portion of the
community to which the string may be explicitly or implicitly
targeted.
• Objections heard by International Center of Expertise of the
International Chamber of Commerce

Rights Protection Mechanisms


Rights Protection Mechanism

• RPMs for second-level domains in new gTLDs
– Trademark Clearinghouse
• Trademark Claims Service
• Sunrise Registrations
– Uniform Rapid Suspension (URS)
– Post-Delegation Dispute Resolution Procedure (PDDRP)
• Top Level
• Second Level
– Registry Restriction Dispute Resolution Procedure (RRDRP)
– Uniform Dispute Resolution Policy (UDRP)


Trademark Clearinghouse

• Central repository of authenticated trademark information
– Primarily used to support pre-launch Trademark Claims and
Sunrise Registrations and Dispute Resolution Policies
• The standards for inclusion are as follows:
– Nationally or regionally registered word marks
– Any word mark that has been validated through a court of law or
other judicial proceeding
– Any word mark protected by a statute or treaty in effect at the
time the mark is submitted to the Clearinghouse for inclusion.
– Other marks that constitute intellectual property
– Protections afforded to trademark registrations do not extend to
applications for registrations, marks within any opposition
period or registered marks that were the subject of successful
invalidation or cancellation proceedings


Trademark Claims Service

• Applicable only in the first 60 days of general registration
• In the case where a domain is submitted for registration in a new
gTLD and is identical to an authenticated trademark within the
Clearinghouse, the Trademark Claims service will provide
notification to the prospective registrant and confirm that:
– (a) the prospective registrant has received notification that the
mark(s) is included in the Trademark Clearinghouse
– (b) the prospective registrant has received and understood the
notice
– (c) to the best of the prospective registrant’s knowledge, the
registration and use of the requested domain name will not
infringe on the rights that are the subject of the notice
• If the domain in question is registered, the rights owner will be
promptly notified


Sunrise Registration

• Sunrise registration periods provide rightsholder with priority
registration
• Assuming that eligibility requirements are met, Sunrise
Registrations will also be made available to all trademark holders
in the Clearinghouse
• Notices will be provided to all trademark holders in the
Clearinghouse if someone is seeking a Sunrise Registration.
– Conflicts that arise may be subject to a Sunrise Dispute
Resolution Policy (SDRP).


Uniform Rapid Suspension (URS)

• The URS system is designed to provide a cost-effective,
expedited process to address issues of infringement and abuse
• Form complaints are filed electronically and are designed to be
as simple and formulaic as possible.
• The complainant may submit no more than 500 words of
explanatory free-form text
• Fees “expected” to be in the range of US $300 per proceeding
• A limited “loser pays” model has also been adopted for URS
complaints listing 15 or more disputed domain names will be
subject to a Response Fee which is refunded to the prevailing
party


URS

• Important: domains are only suspended for the remainder of their
current registration term, or for an additional year at current
market registration rates

• Important: domains become available for registration again after
suspension

• Important: domains are likely to be registered again, resulting in
a cycle of watching and suspending


Uniform Domain Name Dispute Resolution Policy (UDRP)

• Designed for disputes concerning an alleged abusive registration
of a domain name

• Abusive registrations are those that meet the following criteria:
– The domain name registered by the domain name registrant is
identical or confusingly similar to a mark in which the
complainant (the person or entity bringing the complaint) has
rights
– The domain name registrant has no rights or legitimate
interests in respect to the domain name in question
– The domain name has been registered and is being used in
bad faith


Post-Delegation Dispute Resolution Procedure
(PDDRP) - Top Level
• Compliant procedure for a string “right of the dot”

• Rightsholders have the ability to file a complaint if the gTLD string
(to the “right of the dot”) is identical or confusingly similar to the
complainant’s mark and the registry is:
– (a) taking unfair advantage of the distinctive character or the
reputation of the complainant's mark; or
– (b) impairing the distinctive character or the reputation of the
complainant's mark; or
– (c) creating a likelihood of confusion with the complainant's
mark


Post-Delegation Dispute Resolution Procedure (PDDRP) -
Second Level

• Compliant procedure for a string “left of the dot”
• Rightsholders may file complaints against registries who have
acted in bad faith with the intent to profit from the systematic
registration of infringing domains at the second level (to the “left
of the dot”).
• Examples of infringement include:
– registries with a pattern or practice of actively and
systematically encouraging registrants to register domain
names and to take unfair advantage of the trademark to the
extent and degree that bad faith is apparent
– registries with a pattern or practice of acting as the registrant
or beneficial user of infringing registrations in order to
monetize and profit in bad faith


PDDRP

• Burden of proof is on the complainant
• Complaint can be no longer than 5,000 words and 20 pages
(excluding attachments)
• Remedies include:
– requiring the registry to implement measures to protect
against allowing future infringing registrations
– the suspension of accepting new domain name registrations
until violations are cured
– termination of a Registry Agreement (in extraordinary
circumstances)


Registry Restriction Dispute Resolution Procedure (RRDRP)

• Compliant procedure for community-based gTLDs

• Complainant asserts that it is “a harmed established institution as
a result of the community-based gTLD registry operator not
complying with the registration restrictions set out in the Registry
Agreement”
– TLD operator violated the terms of the community-based
restrictions in its agreement
– Measureable harm to the complainant and the community
named by the objector


Q&A
http://newgtlds.icann.org/en
http://newgtlds.icann.org/en/applicants/agb


jeff.vanhoosear@knobbe.com
Jeff Van Hoosear 949.721.5274

The New gTLD Program: What, When, and Why

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