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Land Rush in Cyberspace: ICANN's Proposed Game-Changer and Its Impact on Trademark Rights

July 7, 2009

The Internet Corporation of Assigned Names and Numbers ("ICANN") is about to implement a game-changing new structure for the registration of Internet domain names, and now is the time to let your organization's voice be heard. At its 35th Annual Public Meeting, ICANN discussed proposals for releasing new generic Top-Level Domain names ("gTLDs") and new country-code Top-Level Domain names ("ccTLDs"). If implemented, ICANN's release of new gTLDs and new ccTLDs will transform the Internet into a scene out of an old western film by creating an Internet land rush of tremendous proportions as trademark holders scramble to protect newly minted Internet space from cyberspace squatters.

Currently, there are 21 active gTLDs (e.g., .COM, .NET, and .ORG) and 249 ccTLDs (e.g., .US, .FR, .CA, and .UK) that identify Internet space just as zip codes and country codes identify real space.  Currently, organizations and individuals can purchase and register lower-level domain names (e.g., GOOGLE.COM, MICROSOFT.COM, and APPLE.COM) which, like street addresses, pinpoint a more specific cyberspace location within a given gTLD or ccTLD. Under the proposed gTLD and ccTLD expansion initiatives, however, hundreds of new gTLDs and ccTLDs would be introduced over the next two years resulting ultimately in the addition of new cyberspace continents to be distributed in a land grab of world-wide-web proportions.

New gTLDs could include brand-specific domain extensions such as .MYCOMPANYNAME, geographic-centric domain names such as .TEXAS, and even generic domain extensions such as .SOFTWARE.  New ccTLDs may include release of new Internationalized Domain Names which are Internet domain names that contain non-ASCII characters. Accordingly, upon passage of ICANN's proposal, in order to retain a saturated and well protected Internet presence, trademark owners, in particular, may be forced to place a stake in the ground on each plot of newly created Internet soil.

Consider, for example, a well-established company with high-value brand equity that owns a trademark, YOURMARK. In order to protect its trademark, as well as its brand identity across cyberspace, the company has registered YOURMARK as a domain name across multiple gTLDs (e.g., YOURMARK.COM, YOURMARK.NET, YOURMARK.ORG, and YOURMARK.BIZ) and multiple ccTLDs (e.g., YOURMARK.COM.MX, YOURMARK.CO.UK, and YOURMARK.ES). In order to merely maintain its brand equity and protect the value of its trademark under ICANN's new cyberspace architecture, the company, for example, may be forced to register its domain name under numerous new gTLDs (e.g., YOURMARK.YOURMARK, YOURMARK.TEXAS, and YOURMARK.SANFRANCISCO) and under any new Internationalized Domain Names that are released.

Although brand owners have expressed concern over the impact of ICANN's gTLD and ccTLD expansion, ICANN has showed no signs of reversing its soon to be implemented expansion of cyberspace. Even though a final version of the implementation plan must still be approved by the ICANN Board, the new gTLD and ccTLD architecture was approved by ICANN for implementation on June 26, 2008, and implementation of the plan is expected later this year. Accordingly, in March 2009, as a result of advocacy efforts of the Intellectual Property Constituency within ICANN, the ICANN Board authorized the Intellectual Property Constituency to form an Implementation Resolution Team ("IRT") to "develop and propose solutions to the overarching issues of trademark protection in connection with the introduction of new gTLDs."

The IRT's final report (a copy of which can be accessed by clicking here), observes that
"[d]omain abuse . . . is a business with low overheads, no barriers to entry and few risks" and that the "sale and broad expansion of new TLDs in the open market, if not properly managed, will provide abundant opportunities for cybersquatters to seize old ground in new domains."  Consequently, the IRT's final report proposes several Rights Protection Mechanisms including, for example, the establishment of an IP Clearing House to provide centralized data support and storage for new gTLD registries, and the creation of a Globally Protected Marks List ("GPML"). The GPML would serve as a "white list" for trademarks owned by individuals or organizations meeting certain domain name ownership and market saturation criteria. If implemented, ICANN would prohibit registration of domain names identical to names on the GPML. The report also proposes establishing a Thick WHOIS (i.e., a comprehensive identification summary) for each domain name within a new gTLD in order to prevent cybersquatters from concealing their registration information.

Because ICANN seems unlikely to reverse its course of implementing new gTLDs and ccTLDs, it is critical for trademark owners to carefully study and voice concern regarding the proposed Rights Protection Mechanisms. In order to inform ICANN as to the position of your organization regarding the proposed Rights Protection Mechanisms, you can do either of the following:

  1. Attend an upcoming Regional Consultation Meeting being hosted by ICANN in New York City on July 13 or London on July 15. Pre-registration for each of these events is required and must be received by July 10, 2009Click here to learn more about these meetings or to pre-register to attend.
  2. Join an industry consortium group within your organization's field that can lobby ICANN on behalf of its members to set policies and standards beneficial to your organization's industry sector. Such industry consortium groups may, for example, conduct member surveys regarding ICANN's proposed policies and convey the results of such member surveys to ICANN.

For those not interested in pursuing either of these avenues for objections or comments to the proposed gTLD and ccTLD expansion initiatives, we suggest monitoring these developments closely so that your organization will be in a position to further stake out and protect its domain name and trademark rights in the new cyberspace continents that will be created if ICANN implements its proposed game-changing Internet architecture. We currently expect ICANN to begin introducing new gTLDs and ccTLDs into the marketplace in 2010.