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Land Rush in Cyberspace Update - Act Now

October 12, 2009

The Internet Corporation for Assigned Names and Numbers ("ICANN") is on track to open cybersquatting floodgates with its release of hundreds of new generic Top-Level Domain Names ("gTLDs") by the first quarter of 2010.  On September 23, 2009, ICANN testified before Congress that "cybersquatting is a major concern for ICANN and others interested in eradicating this harmful behavior."1 Nevertheless, just nine days later, on October 2, 2009, ICANN released a third revision of the Draft Applicant Guidebook reflecting only two of the five rights protection mechanisms recently requested by the Implementation Resolution Team.2 Accordingly, brand owners should, now more than ever, make their voice heard and register their trademarks in order to protect their valuable brands in the forthcoming virtual land rush of Internet-sized proportions.

Particularly, ICANN has only adopted the proposed “thick” Whois database and the proposed post-delegation dispute resolution mechanism for inclusion in the Draft Applicant Guidebook, both of which provide only minimal trademark protection. Conversely, ICANN forthrightly rejected perhaps the most beneficial rights protection mechanism, the proposed Globally Protected Marks List.3 It also failed to include in the revised Draft Applicant Guidebook (but did not necessarily reject) the proposed Uniform Rapid Suspension System ("URS") designed to quickly adjudicate cases of clear abuse and the proposed Trademark Clearinghouse (formerly the IP Clearinghouse) designed to streamline rights protection.

Adopted Rights Protection Measures

The proposed "thick" Whois database, for instance, would require all new gTLD registries (who are responsible for gTLD management) to record and provide a more detailed set of registrant contact information in a centralized database than is currently required on “thin” Whois databases. Registries using a “thin” Whois database are not required to record and provide this information, but such information is readily available in dispersed registrar databases.4 Moreover, the proposed "thick" Whois database fails to address database inaccuracies (due to, e.g., fraudulent, erroneous, or outdated information) and the prevalent use of third-party proxy services that mask registrant data.

The post-delegation dispute procedure provides trademark holders with an avenue to lodge complaints of abusive behavior against domain name registries.5 Regrettably, it is limited to claims against registry operators who have acted in bad faith, with the intent to profit from the systematic registration of infringing domain names. So while an avenue is provided against serial cybersquatting registries (i.e., gTLD owners), the proposed post-delegation dispute procedure fails to provide needed enforcement tools against more likely cybersquatting registrants (i.e., individual domain name owners).

Rejected Global "White List"

The rejected Globally Protected Marks List ("GPML") would have served as a "white list" for trademarks owned by parties meeting certain strict criteria and would have prohibited third-party registration of domain names identical to names on the list. Although the standards for obtaining admission to the proposed GPML were arbitrary and strict, the GPML would have provided at least an opportunity for passive protection for some global brands. Rather than attempting to find workable admissions criteria, however, ICANN rejected the GPML and, along with it, the ability of certain brand owners to preempt registration of infringing domain names.

Trademark Clearinghouse and URS Open for Comment

In what is perhaps the only positive development for trademark owners thus far, ICANN has not entirely dismissed the proposed URS6 or the proposed Trademark Clearinghouse.7 Although ICANN included neither proposal in its latest Draft Applicant Guidebook, it has asked the Generic Names Supporting Organization ("GNSO"), which developed the overall gTLD implementation policy, to determine whether these rights protection mechanisms are appropriate and effective options for achieving the GNSO's gTLD principles and objectives.

Generally, the proposed URS would provide an expedited procedure for addressing clear cases of trademark infringement by domain name registrants. The proposed Trademark Clearinghouse would provide a database of validated trademarks to be utilized by new gTLD registry operators in implementing either: (1) a "Trademark Watch" service to provide notice to trademark owners of any new domain name registrations matching their trademarks and notice to registrants that matching trademark registrations exist; or (2) a "Sunrise Period" during which trademark owners could register domain names matching their trademarks recorded with the Trademark Clearinghouse prior to general registration of domain names on a new gTLD.

Voice Concern and Register Trademarks Now

Because both the proposed Trademark Clearinghouse and the proposed URS largely rely on registered trademarks, all trademark holders should immediately seek registration for any valuable unregistered trademarks both domestically with the U.S. Trademark Office and internationally. For example, in order to participate in a Sunrise Period, a brand owner must have a trademark on record with the Trademark Clearinghouse that: (1) is of national effect, (2) issued on or before the effective date of the particular gTLD registry agreement, and (3) was applied for on or before ICANN published the new gTLD application list (which may happen as early first quarter 2010).

In addition to immediately registering their trademarks, brand owners should also secure currently available brand-related domain names, join Web 2.0 communities to further stake out their claim on vastly changing virtual continents, and carefully study and voice concern regarding both the third Draft Applicant Guidebook and the lack of adequate rights protection mechanisms. In order to inform ICANN as to the position of your organization, you can do any of the following:

    1. Submit public comments regarding the third Draft Applicant Guidebook, on or before November 22, 2009, at http://www.icann.org/en/topics/new-gtlds/comments-3-en.htm.
    2. Submit public comments regarding the proposed Trademark Clearinghouse and the proposed URS, on or before November 22, 2009, at http://www.icann.org/en/topics/new-gtlds/gnso-consultations-reports-en.htm.
    3. Write a letter to ICANN's President and CEO, Rod Beckstrom, and Chairman of the Board of Directors, Peter Dengate Thrush, at 4676 Admiralty Way, Ste. 330, Marina del Rey, CA 90292.
    4. Write your U.S. Senator or Representative or any of the members of the U.S. House Committee on the Judiciary Subcommittee on Courts and Competition Policy (a list of which is available at http://judiciary.house.gov/about/subcourts.html).


1 Hearing on the Expansion of Top Level Domains and Its Effect on Competition Before the U.S. H. Comm. on the Judiciary Subcomm. On Courts and Competition (September 23, 2009) (testimony of Doug Brent, Chief Operating Officer, Internet Corporation for Assigned Names and Numbers), available at http://judiciary.house.gov/hearings/pdf/Brent090923.pdf (last visited Oct. 8, 2009).

2 Internet Corporation for Assigned Names and Numbers, Draft Applicant Guidebook, Version 3 (Oct. 2, 2009), http://www.icann.org/en/topics/new-gtlds/draft-rfp-clean-04oct09-en.pdf (last visited Oct. 8, 2009).

3 Internet Corporation for Assigned Names and Numbers, New gTLD Program Trademark Clearinghouse (Oct. 2009), http://www.icann.org/en/topics/new-gtlds/summary-analysis-tm-clearinghouse-comments-04oct09-en.pdf (last visited Oct. 8, 2009).

4 Internet Corporation for Assigned Names and Numbers, New gTLD Program Explanatory Memorandum: Thick vs. Thin Whois for New gTLDs (May 30, 2009),
http://www.icann.org/en/topics/new-gtlds/thick-thin-whois-30may09-en.pdf (last visited Oct. 8, 2009).

5 Internet Corporation for Assigned Names and Numbers, Proposed Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP) (Oct. 2009), http://www.icann.org/en/topics/new-gtlds/draft-trademark-pddrp-04oct09-en.pdf (last visited Oct. 8, 2009).

6 Internet Corporation for Assigned Names and Numbers, For GNSO Consideration:  Uniform Rapid Suspension System (URS) (Oct. 2009), http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-urs-04oct09-en.pdf (last visited Oct. 8, 2009).

7 Internet Corporation for Assigned Names and Numbers, For GNSO Consideration: Trademark Clearinghouse (Oct. 2009), http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-tm-clearinghouse-04oct09-en.pdf (last visited Oct. 8, 2009).