Domain Name Extensions Extended Again

ICANN decided Friday to postpone approval of procedures for organizations to propose new generic top-level domains (gTLDs).  Companies anticipating the need to protect trademarks in a potentially large number of new gTLDs will have at least a few more months to understand and weigh in on the proposals, and to brace themselves for successive rounds of sunrise filings and domain name disputes as new gTLDs are introduced.

The board of the Internet Corporation for Assigned Names and Numbers (ICANN), the international Internet oversight body, voted on December 9 in Cartagena to submit several issues on gTLD extensions for further review and comment by ICANN's Government Advisory Committee, which is comprised of representatives of more than 100 national governments.  The GAC is to report in February.

There are currently 21 gTLDs (.com, .org, and .net being the most popular), and more than 270 country code top-level domains (ccTLDs).  After years of debate, a set of policy recommendations for creating new gTLDs was adopted in October 2007.  But the devil is in the details, as reflected in a succession of drafts for an Applicant Guidebook for the would-be sponsors of new gTLDs.  The latest draft was published in November.

Much attention has focussed on the controversial proposal for a .xxx pornography domain, but the larger issues remain trademark protection and mechanisms for deterring malicious conduct that could threaten the functioning of the Internet.  Domainers are gearing up to register potentially lucrative domain names in new gTLDs.  Meanwhile, having fought their battles in the .com gTLD and a variety of other gTLDs and ccTLDs, trademark holders find daunting the prospect of defending their brands against the registration of identical or confusingly similar domain names in potentially dozens of new gTLDs.

ICANN currently contemplates handling objections to new gTLDs in a succession of "rounds," with designated dispute resolution services providers such as WIPO, the ICC, and the International Centre for Dispute Resolution resolving challenges to the new gTLDs themselves to avoid confusion and public interest concerns.  The introduction of a new gTLD may be reasonably quick, or it may be delayed by objections to the string itself or to the nature of the proposed use, as in the case of the .xxx domain.

The current draft of the Applicant Guidebook envisages a Trademark Clearinghouse, a repository of authenticated and validated trademarks that can be used to support pre-launch trademark sunrise and claims procedures for each new gTLD.  We note that this procedure favors registered or adjudicated marks, while many US companies and individuals have traditionally relied on unregistered common-law marks in domain name disputes.  The Applicant Guidebook contemplates a Uniform Rapid Suspension System (URS), a streamlined and cheaper version of the Uniform Dispute Resolution Policy (UDRP), to challenge the registration of domain names in any of the new gTLDs that are identical or confusingly similar to registered marks or marks that have been validated in court proceedings or by treaty, or by the Trademark Clearinghouse.  The operators of registries for the new gTLDs will also adopt residual dispute resolution policies (these will likely be modelled on the UDRP), and many will probably follow the lead of the .biz and .mobi registries and establish pre-launch sunrise procedures for trademark holders to assert their rights in related domain names before public registration commences.

This would be a good time for companies to review their trademark portfolios and consider proceeding with trademark registration applications.  Holders of registered marks will want to include them in the Trademark Clearinghouse before a wave of new gTLDs arrives, possibly in 2011.  Trademark holders should also update their enforcement policies and procedures to ensure that they are aware of new gTLDs, decide promptly whether to register domain names based on their marks in some or all of the new gTLDs, and respond quickly in the short time frames typically involved in pre-launch sunrise and claims procedures and in URS proceedings.  Taking advantage of these new procedures can save the company time, money, and potential confusion in the marketplace, as contrasted with an approach of waiting to see if infringing domain names are registered and then contesting them in court or in UDRP or similar administrative dispute resolution proceedings.