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New gTLD's Are Coming...Keep Speaking Up, Your Voices Are Being Heard!

January 11, 2011

Stakeholders objecting to the proposed new generic Top-Level Domain ("gTLD") registration system should submit their comments to ICANN now. We currently expect ICANN to begin introducing new gTLDs into the marketplace in mid-to-late 2011. Stakeholders should be prepared to begin the application process, or to begin monitoring the applications submitted by others, at that time.

In the continuing saga towards establishing a new gTLD registration system, the Board of Directors ("the Board") of the Internet Corporation for Assigned Names and Numbers (“ICANN”) hit a speed bump in what had appeared to be the final sprint towards implementing gTLDs. Due to overwhelming protest and concern from stakeholders, ICANN closed its recent meeting in Cartagena, Colombia—one of ICANN's most contentious meetings—with further loose ends to tie up before approving the implementation of new gTLDs. Most significantly, ICANN is still fielding comments and concerns from stakeholders and governments, so keep talking—your voices are being heard!

Top Level Domains ("TLDs") identify Internet space just as zip codes and country codes identify real space; and ICANN's proposed new gTLD registration system is an effort to expand the base of active gTLDs. Under the forthcoming gTLD registration system, the world-wide web could see a stampede of brand-specific domain extensions (i.e., the string of characters after the final "." dot) such as ".mycompanyname," geographic-centric domain names such as ".texas", and even generic domain extensions such as ".software," thus exponentially supplementing the 21 currently active gTLDs (e.g., ".com," ".net," and ".org") and over 250 country-specific ccTLDs (e.g., ".US" and ".UK").

Onlookers had widely anticipated final approval of version 5 of the Draft Applicant Guidebook (DAG) for the new gTLD system to occur at the close of the ICANN meeting in Cartagena on December 10, 2010, which would have positioned the new gTLD program for launch the end of May 2011. In a surprising side step, however, the Board delayed approval of the DAG pending resolution of lingering concerns. The Board stated that "community discussions on the draft Applicant Guidebooks have successfully addressed numerous issues, but some implementation issues remain." As the Board continues to address these implementation issues, it resolved to be more forthcoming by providing "a thorough and reasoned explanation of ICANN decisions, the rationale thereof and the sources of data and information on which ICANN relied, including providing a rationale regarding the Board's decisions in relation to economic analysis."1  

Although the DAG failed to win approval in Cartagena, new gTLDs are still steadily marching onward. Stakeholders, however, now have a much-needed respite. This is especially good news for stakeholders who have objected to the insufficient 28-day comment period that ICANN initially proposed for the DAG. So, take a breath, build up your positions, and continue to fight for your cause! 

In its resolutions from Cartagena, the Board acknowledged that the public commentary had identified four main "overarching issues" with the introduction of new gTLDs. Those overarching issues included: (1) trademark protection; (2) mitigating malicious conduct; (3) root-zone scaling; and (4) economic analysis. Regarding the issue of trademark protection, the Board pointed to the establishment of a Trademark Clearinghouse, a Uniform Rapid Suspension ("URS") system, and a Post-Delegation Dispute Resolution Procedure. On the issue of mitigating malicious conduct, the board acknowledged refining proposals such as centralized zone file access to reduce the potential for proliferation of malicious conduct in the new gTLD space. For root-zone scaling, in light of expert consultation on the impact of new gTLDs on the stability of the root, the Board expects no impact on the stability of the root zone system. Lastly, on the issue of economic analysis, the Board pointed to the recently released expert consultation and analyses titled "New gTLD Economic Study Phase II", which was posted on the ICANN website on December 3, 2010.

Stakeholders wishing to file public comments have until January 15, 2011 at 6:00 AM CST (12:00 UTC) to voice their concerns directly to ICANN over the DAG and supporting documents. Members of the public can comment either on the overall guidebook, individual modules, individual areas of interest, or any of the supporting documentation (including the Economic Study Phase II).

The most significant protests of the new gTLDs voiced in Cartagena included those of the Governmental Advisory Committee ("GAC") in session meetings with the Board. The GAC expressed an overall lack of confidence that the benefits of implementing new gTLDs will outweigh the costs and provide a return on investment. The overarching sentiment was that, although the Board had worked hard and consulted with stakeholders, the Board "just is not there yet" with the new gTLDs. Although the GAC voiced its appreciation for the global benefits that may result from the new gTLDs, the GAC focused squarely on the potential for undue burdens for certain categories of stakeholders. The GAC also demanded more robust documentation regarding the proposed vertical integration between registries and registrars in response to the Board's earlier resolution to remove all cross-ownership restrictions between registries and registrars in new gTLDs. Public stakeholders later echoed the GAC's concerns in a public forum with the Board, but some others in the public forum attempted to cast doubt over the foundation of the GAC's concerns. 

The Board took note of the GAC's overwhelming concern and invited the GAC to reconvene for an inter-sessional meeting to address the GAC's specific views on outstanding issues with the new gTLD process. It appears that the Board, after nearly two years of shrugging off the concerns of the GAC, is finally lending an ear. In turn, the GAC accepted this invitation, and the GAC agreed to provide a list of issues that it believes are still outstanding and require additional discussion between the Board and the GAC. The Board successfully resolved to conduct the inter-sessional meeting in February of 2011. The Board also directed ICANN staff to make revisions to the DAG, as appropriate, based on the comments received during the public comment period in advance of the meeting. 

Other significant concerns voiced at the Cartagena meeting included those of IP owners concerned over the selective incorporation of rights-protection mechanisms ("RPMs"). One significant rights-protection mechanism is the Uniform Rapid Suspension ("URS") system, which provides an expedited, inexpensive avenue for resolving what appear to be clear-cut cases of infringement. Although the URS response period was shortened from 21 to 14 days, brand owners object that the URS process is still too long (the end-to-end URS process could still take up to 40 days). The battleground over URS continues to play out, as other stakeholder groups object to the 14-day response period for being too short, for example, for busy registrants needing significant lead time.  Because the remedy under the URS system is the suspension, not the transfer, of the infringing domain name, a brand owner must invoke the more arduous Uniform Domain-Name Dispute Resolution Policy ("UDRP") to effect a transfer of an infringing domain name.

Looking to the future, a version 6 of the DAG will likely be forthcoming in February 2011, and on March 18, 2011, the ICANN Board will reconvene to approve, most likely, that version of the DAG. Upon approval, should such occur, a four-month communication campaign will commence before applications for new gTLDs are accepted. Stakeholders should be prepared to begin the application process, or to begin monitoring the applications submitted by others, in late summer or early fall of 2011. But for the next few months, there is still time to speak up and be heard.

Because new gTLDs are soon arriving at our doorstep, it is critical for trademark owners to carefully study and voice concern regarding the DAG and future updates. In order to inform ICANN as to the position of your organization regarding the DAG, you can do either of the following:

  1. Participate in the public comment period, which concludes January 15, 2011 at 6:00 AM CST (12:00 UTC). or
  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 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 into the marketplace in mid-to-late 2011. Once the new gTLDs go into effect, we expect the application process to include significant interaction between the applicant, the public, and evaluation panels. The public will be informed of, for example, an applicant's application information and any objections, status reports, evaluation summaries, executed contracts, and any strings delegated. The public will be able to provide comments to the evaluation panels, which submit their analysis to the applicant through the TLD Application System ("TAS"). The public can also participate in the objection process after the initial evaluation but prior to string delegation, which can include objections based on string confusion, legal rights, limited public interest, and community objections.

Stay tuned for further updates as the new gTLD process develops over the next few months.

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1 This resolution is, in part, responsive to concerns expressed to ICANN by the United States Department of Commerce ("USDOC") in correspondence dated December 2, 2010. The USDOC alleged that ICANN has failed to meet its prior commitment to provide a "thorough and reasoned explanation of decisions taken" with respect to the Board's resolution on November 5, 2010 to allow for full cross-ownership or vertical integration of registrars and registries.