As regular readers of Anchovy News will know, the process for the launch of new generic Top Level Domains (gTLDs) has been ongoing since June 2008 when the board of the Internet Corporation for Assigned Names and Numbers (ICANN) gave their approval to the proposal to introduce new gTLDs.

Since then there have been four iterations of the Draft Applicant Guidebook (DAG) which have attempted to define the process for submitting applications to operate a new gTLD. Each version of the DAG has been followed by an extensive public comment period and vigorous debate from the ICANN community.

All of this work has been building up to the drafting and release of proposed final applicant guidebook (known as the AGB). The proposed final AGB was published for public comment on 12 November 2010 for a period of 4 weeks.

The publication of the AGB followed on from the resolutions made at the ICANN Board meeting in Trondheim, Norway on 24 - 25 September 2010 which focused on the new gTLD program and key areas of the program that needed to be discussed before implementation.

Rights Protection Mechanisms

As reported in the October issue of Anchovy News, the ICANN Board resolutions covered the proposed Rights Protection Mechanisms (RPMs) for trade mark holders under the new gTLD program and attempted to provide clarity on the issue of what was meant by substantive review in relation to trade marks in the new gTLD program.

The use of the term "substantive review" as employed by ICANN has been viewed as problematic by the intellectual property community, primarily because ICANN had previously not sought to define its use of the term and thus it remained open to interpretation. This led to uncertainty as to what the accepted standard would be for "substantive review" from the national and regional trade mark registries around the world.

In response to this, the ICANN Board resolutions provided a definition of what was meant by substantive evaluation upon trade mark registration, as follows:

  1.  evaluation on absolute grounds - to ensure that the applied for mark can in fact serve as a trade mark;
  2.  evaluation on relative grounds - to determine if previously filed marks preclude the registration; and
  3.  evaluation of use - to ensure that the applied for mark is in current use."

New gTLD Registries that elect to implement a Trade Marks Claims service as a pre-launch RPM must recognise all trade marks, regardless of whether the country of registration conducts a substantive evaluation or not. However, new gTLD Registries that choose to implement a Sunrise service as a pre-launch RPM must recognize all text marks (i) that have been registered in a jurisdiction that conducts a substantive evaluation of trade mark applications prior to registration; or (ii) that have been validated by a court or by the Trade Mark (TM) Clearinghouse that will be set up as part of the launch of new gTLDs.

The rationale behind this distinction relates to the fact that Sunrise processes are designed to enable trade mark holders to secure domain names corresponding to their trade marks, rather than just allowing them to object (as for Trade Mark Claims services). It was thus felt appropriate that there should be a higher burden of proof on trade mark holders wishing to participate in Sunrise processes.

However the previous ICANN Board resolution was somewhat ambiguous in that it stated that evaluation, whether at registration or by a validation service provider, would be required on absolute grounds and use of the mark, which could be interpreted as meaning that evaluation on relative grounds would not be necessary for trade marks used in Sunrise processes.

However, unfortunately for some trade mark holders, the language in the AGB makes it clear that for a trade mark registration to be considered as one that has undergone substantive review at the point of registration then it must meet all three requirements outlined above.

Thus it would appear that the language in the proposed final AGB regarding RPMs does not differ significantly from that of the DAGv4 and simply clears up this ambiguity in the previous Board resolutions. As reported in the June issue of Anchovy News, it would seem that the proposed RPMs are far from satisfactory. In particular very few trade marks actually undergo substantive evaluation (as defined in the AGB) at the point of registration, which suggests that many brand owners will have to have their trade marks validated by the TM

Clearinghouse in order to participate in Sunrise processes. As this is the proposed final version of the AGB, it seems that this may be the last chance for trade mark holders to make their voices heard by ICANN and to provide comments on the new gTLD program and RPMs. The deadline for comments to ICANN is 10 December 2010.

Vertical Integration

As previously reported in the October issue of Anchovy News, ICANN had previously indicated that this version of the AGB was intended to be final with a proposed timeline giving a launch date of May 2011 for the opening of the new gTLD application process. This was despite the uncertainty surrounding some issues with the new gTLD program such as Registry/registrar vertical integration (VI) and objections to new gTLD strings on the grounds of Morality and Public Order.

However, in early November ICANN made an announcement on the issue of VI that resolved the deadlock surrounding this question. In the DAGv4 cross ownership between Registry operators and registrars was strictly prohibited. The ICANN Board had tasked the Generic Names Supporting Organization Council (GNSO) to form a VI Working Group to put forward an alternative proposal on the issue of VI that had the consensus of all VI Working Group participants. The ICANN Board made it clear that if consensus could not be reached by the VI Working Group then the Board would decide.

The VI Working Group was unable to reach a consensus on the issue of VI and thus it fell to the ICANN Board to reach a decision. This they duly did and at a recent ICANN Board retreat they voted to eliminate the existing prohibitions on cross ownership between domain name Registries and domain name registrars.

This announcement was met with delight by prospective new gTLD applicants who will thus be able to offer domain name registrations directly to market via their own registrar accreditations. In addition the AGB contains the relevant language to permit cross ownership between domain name Registries and registrars.

The decision to remove the barriers to VI in the new gTLD program caught many by surprise as it represents a complete break with the status quo of Registry/registrar separation. Even though the VI Working Group could not reach a consensus on how to tackle the issue, the majority of participants did favour some form of restrictions on cross ownership. Taken in this context, the decision by the ICANN Board to permit cross ownership is even more of an eye opener and it is likely to be thoroughly debated in the coming weeks. 

To read more about new gTLDs on the ICANN website, please go to: http://www.icann.org/en/tlds/select.htm