In 2011, the Board of the Internet Corporation for Assigned Names and Numbers (ICANN) approved the expansion of the Internet’s domain name system (the New gTLD Program). What does this mean? Before the expansion, the Internet was limited to 22 generic Top Level Domains (gTLDs), including .com, .net and .org, together with 300 or so country code TLDs, such as .us, .uk, and .fr. After the expansion there will be more than 1,300 gTLDs, including brands (e.g. .google or .apple), geographic terms (GeoTLDs, e.g. .nyc, .london, .berlin and .tokyo) as well as generic terms (e.g. .book.). As these new gTLDs continue to launch, the media at large will need to recognize them as working domain names. Below is a summary of how the expansion works and what it means for the business community and public-at-large.
The new gTLDs provide a wide range of website address options for registrants. Take, for example, GeoTLDs, which offer a localized and potentially more informative address as the wording on both sides of the dot imparts pertinent information: shubert.nyc, toureiffel.paris and gov.wales have all adopted GeoTLD addresses. However, they also create new opportunities for cybersquatting and consequently a greater need for defensive registrations to protect both business interests and the public.
To address the concerns of brands owners, ICANN developed limited rights protection mechanisms (RPMs), including an obligatory priority registration period (the Sunrise), for brand owners who record their rights in the Trademark Clearinghouse (TMCH).
Sunrise obligations can create various tensions between GeoTLD operators and brand owners. For a successful launch, the GeoTLD will try to sign up high profile businesses or attractions as “founders” to act as ambassadors. Publications can be particularly beneficial for promotion purposes, for example, the Evening Standard was a founder for .LONDON as was Gay City News for .NYC.
GeoTLD operators also prefer to allocate certain names to public entities in preference to a brand owner with the same name, e.g. Police sunglasses, Subway sandwiches. This can only be done in accordance with the rules set by ICANN, which organizations like the International Trademark Association (INTA) helped to shape, so that the RPMs are not undermined.
Strict limits are imposed on the number of domain names which can be allocated before the Sunrise, even to founders. Specifically, TLDs may adopt a qualified launch program (QLP), under which up to 100 names may be pre-allocated. If there is a relevant trademark in the TMCH, however, the name can only be allocated to the trademark owner, unless the name exactly matches that of a public body, place or service, which would then have priority.
Finally, most GeoTLD operators see a benefit to giving some priority to local registrants. This can be done, again provided that the Sunrise is not undermined. Many GeoTLDs, including .NYC and .LONDON, have run tailored launch programs, to allocate names to those who demonstrate verifiable local trademark rights, trading names, and addresses before they become generally available. This is permissible provided it is not done before the allocation of the Sunrise names.
There are GeoTLD operators who feel these rules are too restrictive. Equally, some brand owners are concerned that the QLP may undermine their rights. Nevertheless, these rules are intended to strike a balance, allowing for the allocation of names to the most appropriate party without undermining the rights protections afforded to trademark owners.
Members of the press and the public-at-large will now see many new domains names and, more than ever before, it’s important to pay attention to the information both before and after the dot.
Susan Payne is chair of the gTLD Registry Subcommittee of the Internet Committee at the INTA and Head of Legal Policy at Valideus based in London, England. The International Trademark Association (INTA) is the global association of trademark owners and professionals dedicated to supporting trademarks and related intellectual property in order to protect consumers and to promote fair and effective commerce. For more information, visit inta.org.