In 2008, the board of the Internet Corporation for Assigned Names and Numbers (ICANN) – the international organization which manages and oversees the internet’s domain name system - adopted 19 specific policy recommendations for implementing new generic top-level domains (gTLDs). gTLDs are unique identifiers visible to internet users as a suffix at the end of a domain name, e.g. .biz or .edu. The recommendations were laid down by the Generic Names Supporting Organization (GNSO), which fashions and updates policies governing gTLDs.
In June 2011, ICANN's Board of Directors approved the GNSO’s Guidebook and authorized the launch of the new gTLD program. The program's goals included removing most of the restrictions on gTLDs in an effort to enhance competition and consumer choice, and to facilitate the benefits of innovation via the introduction of new gTLDs. At that time there were just 22 available gTLDs, from which companies could choose the options they considered most relevant. The use of non-Latin characters (such as Cyrillic, Arabic or Chinese) were also allowed in gTLDs.
Noteworthy rights protection mechanisms
The Trademark Clearinghouse (TMCH) is an ICANN-mandated centralized repository of data on trademarks that are registered, court-validated, or protected by statute or treaty. Recorded trademark rights and the proof of use in the TMCH are necessary to utilize the sunrise periods when new gTLDs are launched. The second benefit of the TMCH is a trademark claims service, where a notice is sent to a prospective domain name registrant of a potential conflict between the domain name being sought and an existing trademark. A notice is also sent to the trademark owner if a registrant proceeds to register the domain name after being notified of a potential conflict. The trademark claims period runs at least 90 days after the opening of general registration of new gTLDs.
The Uniform Rapid Suspension system (URS) is a new method of redress available for trademark owners created simultaneously with the new gTLD program. URS is applicable in the clearest cases of trademark abuse and therefore is not suitable for complex cases. The substantive criteria of the URS are similar to the UDRP criteria, but the URS places a higher burden of proof on complainants. The URS also includes a range of additional registrant defenses over an extended time period. The only remedy a URS panel may grant a successful complainant is the temporary suspension of a domain name for the remainder of the registration period. A prevailing complainant may extend the registration period – and with it the suspension period - for one year.
The Uniform Domain Name Dispute Resolution Policy (UDRP) has become familiar to trademark owners since its launch in 1999. The UDRP applies to all domain name registrations in ICANN-approved top-level domains (TLDs), both current and new. The UDRP also applies to a number of country code top-level domains (ccTLDs). The complainant must prove ownership of similar prior trademark rights, that the domain name registrant lacks rights or legitimate interests in the domain name, and that the domain name has been registered and is being used in bad faith. If the complaint is successful, the infringing domain name registration is transferred to the complainant following a ten-day waiting period in the event the respondent seeks recourse in a court of competent jurisdiction.
gTLD activity in numbers
In July 2013, the four first new gTLD agreements which concerned TLDs in non-Latin characters were signed in Durban. By the end of October 2014, 427 new gTLD strings were delegated, such as .DIRECT, .PLACE, .SUZUKI, .ACTIVE, .MINI and .BMW.
At the end of October 2014, the five most popular new gTLDs were .xyz (678,951), .berlin (152,288), .club (127,264), .wang (79,232) and .guru (74,863).
According to gTLD statistics the total number of new gTLDs was 3,026,376, and only 4,773 of these were registered by Finnish registrants – suggesting that the new gTLDs have not been very popular among Finnish brand owners.
The utilization rate of the TMCH, which has been up and running in the 1.5 years since March 2013, has also been fairly low. According to data on the TMCH, there were 32,993 trademarks submitted to the TMCH for verification by September 2014. The total number of submitted trademarks can be considered rather low considering that the TMCH is a global database with a huge number of potential applicants. Trademarks from 103 countries have been submitted so far. Secondly, if we compare that to the 114,000 new community trade mark (CTM) applications filed in the EU in 2013, the TMCH does not appear to be very popular. At the same time 46,829 international applications were filed with the World Intellectual Property Organization (WIPO).
A total of 128 URS cases have been filed to date with the National Arbitration Forum (NAF) in the United States and 11 with the Asian Domain Name Dispute Resolution Centre (ADNDRC) in Hong Kong. Again, if we compare these numbers to the total number of new gTLDs, it shows minimal use of the URS. The total number of UDRP cases handled by the WIPO was 2,585 in 2013, while cases from January-October 2014 totaled 2,164. By the end of this year the total number of cases will very likely be almost the same as in the previous year.
Brand owners still coming to terms with new gTLDs
The new gTLD program generated a great deal of media publicity and brand owners were particularly worried about the growing cyber squatting problem they could face as a result of the launch of new domains. In Finland, at least, and presumably on a global level as well, brand owners appear slightly uncertain about how they should respond to the new gTLDs. As the statistics indicate, the new gTLDs have not been wildly popular among Finnish brand owners. Most appear to be merely observing the situation and the growth of the importance of the new domain options.
Finnish brand owners have also been relatively slow to make use of the TMCH. Instead, they have relied on comprehensive trademark portfolios and domain monitoring services. The domain name environment will change with time and the same applies to brand owners’ actions. What’s most important is that brand owners are at least aware of the changing environment and that they take the necessary steps to meet the challenges the future may hold.