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Revolution in the domain name registration system – ICANN Board’s resolution

On 20 June 2011 on a conference in Singapore the Board of Directors of Internet Corporation for Assigned Names and Numbers (ICANN) approved a plan to significantly increase the number of generic top-level domains (known also as gTLDs). As ICANN webpage informs: Internet address names will be able to end with almost any word in any language, offering organizations around the world the opportunity to market their brand, products, community or cause in new and innovative ways. Currently the most popular gTLD is “.com” – according to ICANN research,  more than 70% webpages currently use it in web addresses.

The application period will be open from 12 January to 12 April 2012. The change creates new possibilities for entrepreneurs as to their presence on the Internet: any company fulfilling ICANN requirements may now apply for an exclusive gTLD. ICANN requirements? In order to at least be taken into consideration, any company applying for its own gTLD will be required to pay an evaluation fee amounting to US$185,000.

Furthermore, the applications will be subject to a multistage and complex procedure that is presumed to last from 9 to 20 months dependent on specific circumstances (extended evaluation, filed objections, etc.). An applicant will be obliged to demonstrate technical, operational and financial capability and proposed registry service for DNS stability. Moreover, the application may be refused due to such reasons as infringement of third party’s exclusive rights, similarity to other gTLD strings, negative views of a government of any country, …

However, even taking into consideration the abovementioned facts, the registration of an own gTLD may prove to be fruitful for many companies. Especially big corporations interested in and willing to consolidate communication with consumers via one top level domain could be interested in applying for a gTLD. After registration of an own gTLD, a company may ensure consumers that all information given via this gTLD comes directly from the company.

Certainly introduction of a vast number of new gTLDs may (and presumably will) lead to a significant increase of cybersquatting attempts, especially that the change enables registration of gTLDs in local scripts. In order to avoid such instances, along with the “gTLD revolution”, ICANN has introduced the Trademark Clearinghouse. The Trademark Clearinghouse will serve for gTLD registry operators as a trademark database. It will be obligatory for gTLD registry operators to take the information in the database into consideration in course of registering domain names.

Firstly, in Trademark Claims service, at least for first 60 days that domain name registrations are open for general registrations gTLD, a registry operator will be obliged to provide domain name registrants with a clear notice of the scope of the mark holder’s rights. Secondly, the reform provides a Sunrise service for trademark holders for a minimum of 30 days during the pre-launch phase and the registrars will be obliged to notice all trademark holders in the Clearinghouse if someone is seeking a sunrise registration.

Along with the Trademark Clearinghouse, introduction of new gTLDs introduces also a widely discussed new system of domain name dispute resolution – Uniform Rapid Suspension System. The aim of the system is to speed up the proceedings before the panel in order to increase trademark/service mark protection. However, the URS system burden of proof standard requires presentation of clear and convincing evidence. Moreover, a trademark owner will be obliged to prove that the trademark is really in use.

We will be attentively observing how the new domain name registration system is operating in practice.

 Author: Rafal Kloczko

For any questions on this article contact: Michal Siciarek

Author: admin