Welcome to the worldwide web of gTlds, soon to explode on the Internet.
The Internet has been so simple to negotiate: Just type three w’s, dot-[name], dot-com and, click, you’re on a website somewhere. Dot-com has been joined by the likes of dot-org, dot-co and dot-ca but the suffix has remained two or three keystrokes the past 20 years.
That is about to change. Indeed, this time next year, website addresses might feature top-level domains, or TLDs, such as dot-bible, dot-hiphop, dot-hockey, dot-baseball, dot-weatherchannel, dot-christmas, dot-lgbt, dot-islam…even dot-sucks.
Los Angeles-based non-profit International Corp. for Assigned Names and Numbers (ICANN), which co-ordinates the Internet’s systems of unique identifiers, has accepted applications for new generic top-level domains (gTLDs), receiving 1,930 applications — from dot-AAA (by the American Automobile Association) to dot-zulu (by Top Level Domain Holdings Ltd.) Each application has to negotiate ICANN’s review processes before going live in 2013. While many of those are for the same TLD — for instance, 13 different applicants are vying for dot-app — enough successful distinct applications are likely to go live in 2013 that the Internet you know today will change in unprecedented ways.
“The applications will now be evaluated by the expert panels selected by ICANN and the initial results are expected to be released in December 2012 or January 2013. There will be a testing phase for the new domains that are approved and ICANN expects that new domains will not go live until mid-2013,” Clark Wilson trademark agent Karen Monteith explained in a post on trademarkblog.ca
Many of the companies that attain gTLDs effectively will become “competitors” to established registries, such as dot-com. And, it will open up a range of issues for in-house counsel to keep an eye on.
Many will be seeking branding advantages, as gTLDs “will add legitimacy and trust for customers when they see a brand in a gTLD,” says Monteith. She suspects “keeping up with the Joneses” will matter in a gTLD-driven world.
“Commercial entities plan to control strings of general interest, and that’s a new thing on the Internet,” says Dan Glover, a Toronto-based associate with McCarthy Tétrault.
All in-house counsel need to understand gTLDs, not just the ones guiding the applications through ICANN’s processes. “It’s not a place many of us would have gone in the past,” adds Ashe-Lee Jegathesan, general counsel and company secretary for Australia-based Melbourne IT Ltd.
“It’s more important for those who haven’t yet paid attention to this,” she adds. “They really need to evaluate what it means to them.”
ICANN has published all necessary information on its website (newgtlds.icann.org), including a guidebook, as well as objections and dispute resolution. The site’s “Reveal Day” list provides information for companies and individuals to determine whether they need to further examine specific applications. (Also visit dotwhat.co, which classifies applications according to whether they’re contested, where they’re from, and other criteria.)
In-house counsel may be wise not to act in isolation on this task, observers say, and co-ordinate efforts with marketing, operations, IT and other departments affected by gTLD applications.
Certain applications may infringe on a company’s trademark portfolio or legal rights, or create other operational concerns.
Two areas of initial focus for any company are potentially problematic domains, such as dot-sucks; and rivals seeking gTLDs where your company did not.
ICANN’s government advisory committee (GAC) consists of national governments and can advise on any application. Concern has already been expressed for dot-patagonia, which is both a clothing company trademark and a region in Argentina.
“If GAC shares this concern, Patagonia may have an issue with its application,” says Michael Stewart, general counsel and director, policy development for the Canadian Internet Registration Authority. Other gTLD applications that GAC could conceivably influence include dot-Amazon and dot-Boston.
Deloitte and IBM are helping ICANN develop a trademark clearinghouse (trademark-clearinghouse.com), which allows owners to register their marks. The clearinghouse will notify both gTLD applicants and registered rights holders if an application infringes on a mark registered with the clearinghouse.
ICANN has opened a seven-month objection period beginning June 13 during which parties with standing may object to specific gTLD applications.
Objections fall into one of four categories.
Apple Inc. of Cupertino, Calif., has applied for dot-apple. “Might Apple the music label want music.apple?” Glover asks. “Will the California Apple let the UK Apple into dot-apple? Will they share? In Canada, will Apple Auto Glass be able to exercise its trademark rights in having autoglass.apple or glass.apple?”
The World Intellectual Property Organization has created a FAQ at wipo.int covering “legal rights objections under ICANN’s new gTLD program.”
If it were submitted, ICANN would foreseeably reject dot-con because it’s too similar to dot-com. ICANN will also review applications for gTLDs that could easily be confused for those in other applications, such as dot-career and dot-careers.
Limited public interest
If they were applied for, dot-torture and dot-slavery would not survive ICANN’s review process since they don’t meet internationally accepted legal norms.
Dot-bank and dot-CPA could be managed by and serve the banking and certified public accountant communities, respectively. But if a homophobic applicant were to vie for dot-gay, the application would face “substantial opposition from a significant portion of the community at which the string is targeted,” says Glover.
While open gTLDs may cause problems (as they can today), closed registries may concern companies much more.
Open registries, such as today’s dot-com, dot-ca, dot-org and dot-edu are open to any registrants who meet the criteria for the TLD in question.
Closed registries, on the other hand, will be held by specific companies and not freely distributed.
“Many companies applied for ‘dot-brands’ like dot-Oracle or dot-Bosch in the context of a closed registry,” Jegathesan says. “From then on, they would operate all their domain names within the scope of their registries. Those registries would not be open to you or me or any unaffiliated organization.”
Conflicts may arise from applications for generic strings that applicants mean to keep closed. For example, should a cloud computing services company attain dot-cloud, it may reserve the TLD for itself, and perhaps its customers. Branding coups like this might not sit well with other companies in the same industries, to say nothing of the Internet community at large. “It could lead to a walled garden instead of the open Internet we have today,” Stewart says.
ICANN’s processes provide mechanisms to deal with potential conflicts, but Stewart figures applicants will deal with these outside of ICANN. “There’s probably ferocious negotiating and horse-trading going back and forth right now. I believe some companies applied for certain strings believing they would be traded or given away in exchange for other strings,” he says.
Jegathesan’s company helped draft 150 applications for its clients, 146 of which were submitted.
Melbourne IT is but one company helping prospective gTLD owners, from the application process through to going live with their registries and beyond, as well as risk/review analyses for non-applicants concerned with specific gTLDs.
Domain monitoring, a common component of ongoing brand management, may be rendered inadequate by the flood of new gTLDs going live in 2013.
“Large portfolio managers are already going into this business,” Monteith says. “They started by helping with applications, and now it will be evaluations and how to file objections.”
“People lobbied ICANN at the June Prague (Czech Republic) meeting about the next round of gTLD applications,” says Jegathesan, adding that a next round hasn’t been announced yet.
If a gTLD is in your company’s future, study the applications of successful gTLD registrants.
“You can find out who their consultants were, and you might want to consider hiring these resources,” says Monteith of Clark Wilson.
This article originally published in In-House Counsel Magazine. For a PDF of the print version, see below.