New gTLD Program Offers Opportunities and RisksPosted 2013-04-23 Print
The new gTLD program provides an overdue expansion of the domain name system, but it raises concerns about cyber-squatting and trademark and brand abuses.
Examples of Legal Rights objections include: <.pin> (filed by Pinterest against Amazon); and <.song> (filed by DotSong Limited against Amazon). Examples of Community objections include: <.hotel> (filed by Hotel Consumer Protection Coalition against Booking.com B.V.); and <.bank> (filed by International Banking Federation against Dotsecure Inc.).
All the objections will be adjudicated through a mandatory arbitration procedure that is expected to be completed in a few months. Third parties had until March 13, 2013, to file objections based on a claim of legal rights in the name that forms the extension at issue.
If an application successfully proceeds through the examination process, the applicant will then be required to perform a series of additional steps before the new gTLD can be implemented. These include completing a set of technical tests to demonstrate that the gTLD can be delegated into the Internet Assigned Numbers Authority (IANA) “root zone” database—which represents the delegation details of top-level domains—within the time frame specified in the registry agreement. It is anticipated that the predelegation testing process will take approximately two months to complete.
It appears that the earliest date that a new gTLD may go live is in July 2013. However, ICANN is proceeding cautiously due to various concerns associated with the release of the new extensions, including concerns about the potential impact on the technical stability of the DNS system. Therefore, it would not be surprising if the release date is delayed.
Another issue that is still being finalized relates to trademark owners’ ability to prevent and respond to abusive registrations once the new extensions go live. ICANN has developed a centralized database called the Trademark Clearinghouse, in which trademark owners can deposit their trademark information. That will give them priority in registering domains during “sunrise periods” on the new extensions, and allow them to receive notice if others attempt to register domains consisting of their trademarks.
The owners of the new extensions will need to ensure that their systems are set up in such a manner that they can comply with their Trademark Clearinghouse obligations.
The new gTLD program has generated significant interest, as demonstrated by the nearly 2,000 applications that were submitted for new gTLD extensions. The strategic and technical considerations that each applicant was required to consider before submitting an application undoubtedly benefited professionals across a range of industries, as well as in the IT, legal and marketing fields.
As the application examination process nears its completion, it is expected that the rollout of the new extensions will result in even more opportunities for professionals in these fields. These will range from setting up IT systems and responding to IT-related issues, to handling trademark disputes, to advising on branding opportunities.
Alexandre Montagu is founding partner at MontaguLaw, P.C., and author of Intellectual Property: Money and Power in a New Era, LegalWorks, 2012.
Tom Walsh, a member of MontaguLaw, P.C., focuses on intellectual property law, particularly in the area of trademarks.
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