New gTLD Developments

Prioritization Draw

Because of the huge number of applications submitted for the first round of new gTLDs and internationalized domain names (“IDNs”), the Internet Corporation for Assigned Names and Numbers (“ICANN”) held a “Prioritization Draw” on December 17 to randomly choose the order for the release of initial evaluation results of new applications. IDN applications were selected first, followed by non-IDN applications. The first non-IDN application chosen (109th in priority) was Amazon EU S.a.r.l’s application for “.PLAY.” Results of the drawing, along with more information about each application, can be found on ICANN’s web site.

The Objection Period for new gTLDs has been extended to March 13, 2013. To date there have been no objections filed against any applications.


Trademark Clearinghouse “Strawman Solution”

A Trademark Clearinghouse “Strawman Solution” has been posted for public comment. Go here for more information. The Strawman Solution was developed in a series of meetings with various stakeholders to discuss the implementation of the Trademark Clearinghouse (“TMCH”) and its associated rights protection mechanisms. The TMCH is designed to facilitate the protection of trademark rights during the initial allocation and registration periods for domain names in new gTLDs. Trademark owners can register their rights in various strings with the TMCH, subject to verification.

The Strawman Solution includes a proposed implementation of Sunrise and Trademark Claims and addressed a number of the elements that were included in a set of recommendations by the Intellectual Property and Business Constituencies (“IPC/BC”) of the Generic Names Supporting Organization (“GNSO”). The Strawman proposals include:

  • Requiring a 30-day notice period prior to opening the required 30-day sunrise registration period for new domains (during which registrations are limited to those who can demonstrate rights in applied-for strings).
  • Extending the initial “Trademark Claims” period (the “Claims 1 Period”) from 60 to 90 days – i.e., the first 90 days of open (post-sunrise period) registration. During this period, anyone who attempts to register a domain name that matches a record in the TMCH will receive a notice informing the would-be registrant of the trademark owner’s claim of rights. For example, if Brand Owner, Inc., owner of the trademark BRAND, had registered its rights in the mark with the TMCH, and those rights were verified, anyone who attempts to register BRAND.would be given notice of Brand Owner’s claim of rights to the mark and would have to acknowledge the notice in order to proceed. In addition, Brand Owner would receive a notice of the registration of BRAND..
  • Adding a further 6-12 month “Claims 2” period that rights holders could participate in for an additional fee. During this period, anyone attempting to register a string contained in the TMCH (such as BRAND) would receive a notice that the string matches a record in the TMCH and a reminder of their responsibilities to avoid trademark infringement, but would not have to acknowledge the notice to proceed. The rights holder would receive a notice that the domain name has been registered.
  • Allowing rights holders to associate up to 50 strings with their TMCH record that previously have been adjudicated as having been abusively registered or used (such as in a domain name dispute proceeding or a court case). For example, if Brand Owner previously brought a successful UDRP proceeding against the domain name, it would be able to associate the string “BRAAND” with its BRAND TMCH record, and the string would trigger alerts during the Claims 1 and Claims 2 Periods.

In addition, the Strawman Proposal discussed a proposal by GNSO’s IPC/BC for a “Limited Preventative Registration Mechanism.” This proposal, also posted for comment, is designed for rights holders who have verified claims in the TMCH and are qualified to register domain names during the Sunrise Period but who do not wish to actively use a domain name consisting of their mark in the new gTLD. Instead, if their mark is not registered during the Sunrise Period by another rights holder, the first rights holder could make a preventative registration of the domain name for five years (eligible for renewal) which would prevent any third-party from registering the domain name (similar to the program included in the .xxx rollout). The domain name would resolve to a notice page.