Internationalized Domain Names

In November 2009, ICANN launched a “Fast-Track” registration process for proposed Internationalized Domain Names for Country Code Top-Level Domains (“IDN ccTLDs”). This process allows countries to apply for IDN ccTLDs in non-Latin characters (e.g., “.??” in the Russian Federation). Domain names that incorporate non-Latin characters are not entirely new. Currently, it is possible to register an IDN with non-Latin characters (e.g., “??.jp”). However, following the approval of the various applications submitted to ICANN through its Fast-Track process, Internet users will soon be able to use non-Latin characters to the left and the right of the “dot.”

As of April 5, 2010, ICANN disclosed that it received 19 applications representing 11 different languages. The following countries have passed initial review for establishing a new IDN ccTLD: Tunisia, Thailand, Taiwan, Sri Lanka, Qatar, the Palestinian territories, Hong Kong, China, Egypt, the Russian Federation, United Arab Emirates, and Saudi Arabia.

Many of these successful applicants announced that they will soon complete the remaining steps necessary to make their new domains available to the public, with the goal of launching these new domain names by mid-2010 or early 2011.

ICANN emphasized that existing domain names registered under Latin-character ccTLDs (e.g., “.ru”) may not automatically transfer to these new IDN ccTLDs. Rather, the registration of domain names under these IDN ccTLDs is subject to a country-by-country application process. While some countries, including the Russian Federation, have already started their domain name registration process, others are still developing theirs. With respect to the Russian Federation, the Coordination Center (which is responsible for administering domain names ending in “.ru” and “.??”) recently announced that requests for domain names must be submitted by April 23, 2010 and all supporting documents must be submitted by May 11, 2010. Currently, to reserve a domain name during this sunrise period under the “.??” ccTLD, applicants may apply only for domain names that correspond with their trademarks registered with either the Russian Federal Service for Intellectual Property, Patents and Trademarks, or with a previous trademark designating the Russian Federation under the Madrid Protocol. Trademark applications will not satisfy this requirement. Further, these domain names must be entirely in Cyrillic characters. It is expected that the Coordination Center will soon amend these requirements to potentially include a larger group of trademark holders.

Fish & Richardson is continuing to monitor the ever-evolving nature of IDN ccTLDs and is able to provide advice about the specific requirements for countries involved in the IDN ccTLD process.

New Generic Top-Level Domain Names

Another major change that will soon impact the Internet is ICANN’s implementation of new generic top-level domain names (“gTLDs”). There are currently 21 gTLDs, including .com, .net, .org, .biz, .mobi, and .tel, among others. ICANN is developing a procedure that will allow for virtually unlimited gTLDs that may include generic terms such as “.bank” and “.nyc” or even trademarks such as “.fish&richardson.” The creation of new gTLDs in non-Latin script is also expected.

As for the launch date, despite requests to conduct further research on the feasibility of an enhanced pre-registration program for these new gTLDs, ICANN continues to pursue the launch of the new gTLD program. As a result, ICANN is expected to publish a near-final draft of the Applicant Guidebook prior to the next round of ICANN meetings, commencing on June 20, 2010.

With these sweeping changes to the Internet, it is important that trademark owners assess their current trademark and domain name portfolios and plan for these new challenges. Fish & Richardson can assist clients in these processes and counsel clients on navigating through these issues as they unfold.