Is This a Sign of the First New gTLD?

By Doug Isenberg As JPMorgan Chase CEO Jamie Dimon recently testified, "To a hammer, everything is a nail."

To me (a domain name attorney helping clients navigate ICANN's launch of new global top-level domain names, or gTLDs), I suppose everything is a domain name issue.

Case in point, this billboard I just spotted at the Denver airport for a company called MWH, which apparently has provided "wet infrastructure" services since 1820:

As I asked in a similar recent blog post about another sign: What, exactly, is the website address (that is, the URL) in this advertisement?

Could it be "global.trade"? Today, no. But next year, maybe so. Indeed, ".trade" is one of the 1,930 gTLD applications that ICANN recently revealed it has received.

The mission or purpose of the proposed ".trade" gTLD, applied for by Elite Registry Limited of Gibraltar, is "to create a blank canvas for the online trade sector set within a secure environment."

Think what you want, but ".trade" someday could become a popular gTLD. In which case, companies such as MWH (whose real URL appears in relatively small type at the bottom of the billboard shown above) will need to be more careful about what they include in their advertisements -- to avoid unintentionally confusing their audience about their website address.

What ICANN's Public Comment Period for gTLD Applications is All About

By Doug Isenberg Anyone with an opinion about any of the pending 1,930 gTLD applications has an immediate opportunity to make his voice known, thanks to a 60-day public comment period at ICANN.

Only a week into the process, though, misunderstandings already abound.

Unlike the formal gTLD objection process, the public comment system is much more limited. Specifically, ICANN's Applicant Guidebook describes the comment period this way:

Evaluators will perform due diligence on the application comments (i.e., determine their relevance to the evaluation, verify the accuracy of claims, analyze meaningfulness of references cited) and take the information provided in these comments into consideration....

In the new gTLD application process, all applicants should be aware that comment fora are a mechanism for the public to bring relevant information and issues to the attention of those charged with handling new gTLD applications.

Thus, relevant comments are those that address the two main elements of the initial evaluation for each application, namely: (1) whether the applied-for gTLD string is "not likely to cause security or stability problems in the DNS" and (2) "whether the applicant has the requisite technical, operational, and financial capabilities to operate a registry."

Despite these caveats, many of the early comments submitted do not address the criteria that evaluation panels will consider when reviewing the gTLD applications. Indeed, based on the numerous comments already posted on some applications, it appears as if there are coordinated campaigns to support certain applications -- as if the commenting system is nothing more than an online petition drive.

Because the commenting system is open to anyone who registers, and because there is no charge to post a comment, the public comments could become a free-for-all.

As a result, it may be challenging for evaluation panels to distinguish applicable comments from those that do not address the criteria they are to consider.

Further, as the Guidebook makes clear, "Public comments will not be considered as formal objections." Therefore, anyone who objects to a specific gTLD application on one of the enumerated grounds -- string confusion,  legal rights, limited public interest and community -- must pay a fee to the applicable dispute resolution service provider, which will issue a decision.

The bottom line: The public comment system could help evaluators pass judgment on gTLD applications in narrow circumstances, but the process is at risk of being devalued, and the only surefire way to oppose a gTLD application is by filing a formal objection, for a fee, with a dispute resolution service provider.

What's Wrong With the URL in This Picture?

By Doug Isenberg I never really thought I'd take a picture inside a portable toilet -- let alone write about it for a legal blog. But, as a domain name attorney, I couldn't help myself when I saw the sign below:

What, exactly, is the website address (that is, the URL) for the company operating this facility?

I had studied ICANN's list of 1,930 applications for new gTLDs just a few days ago, and I certainly didn't recall seeing ".unitedsiteservices" on it. (The list jumped from ".unicorn" to ".university". Seriously.) And, even if I did, ICANN has made clear that no new gTLDs will be approved and delegated until at least the first quarter of next year.

So, "www.unitedsiteservices" is not a valid URL. Try typing it into your web browser (as I did, just for kicks -- yes, I know better) and you'll get a "Server not found" message.

The answer, of course, is that the real URL is "www.unitedsiteservices.com". That's right, the sign omits the gTLD ".com".

Omitting the beginning and often superfluous "www." from a URL (in advertising or when entering it online) is a rather common practice and typically will not affect anything. (Indeed, it's actually a good idea; as English writer Douglas Adams once reportedly said, "The World Wide Web is the only thing I know of whose shortened form takes three times longer to say than what it's short for.")

But, omitting a top-level domain from a web address renders it useless.

I've seen some pretty funny URLs through the years -- and the website "Good URL Bad URL" has documented some great ones. But I can't ever recall seeing a URL in an advertisement that omitted the top-level domain.

Now, I have no way of knowing whether the omission of ".com" from this sign was accidental or purposeful. Perhaps someone thought it wasn't necessary because it wouldn't fit or because, duh, all website addresses end in ".com".

Of course, not all website addresses end in ".com".

If sign makers or companies are confused about domain names today, what will happen when hundreds of new gTLDs start to appear next year? Will it confuse matters even more -- or, will it only reinforce the already-entrenched ".com" as the default?

We'll find out soon. So, hang onto your seat.

Three Things Trademark Owners Learned on ICANN's 'Reveal Day'

By Doug Isenberg Soon after revealing the list of 1,930 potential new global top-level domain names (gTLDs), ICANN tried to reassure trademark owners that they will be protected as the gTLD applications are evaluated (starting in July) and after the approved gTLDs become active (next year).

While trademark owners may disagree with how effectively their brands will be protected, ICANN emphasized what CEO Rod Beckstrom called "extensive intellectual property provisions" in the new gTLD program. Although no new trademark provisions were announced on ICANN's "Reveal Day" disclosing the applied-for gTLDs (nor were any expected), at least three important lessons were learned:

1. The Trademark Clearinghouse (TMC) will begin accepting applications in October.  As previously known, the TMC will serve as a "central repository" for information about trademarks that will come into play during the "sunrise" registration periods of second-level domain names within the new gTLDs (such as, brand.gtld) and during the initial period of general registrations. ICANN had recently announced that IBM and Deloitte would serve as the TMC's service providers and that registrations might cost trademark owners about $150 per submission. Today, ICANN Senior Vice President Kurt Pritz made clear: "We intend to start taking registrations of trademarks in the Clearinghouse in October."

2. The Uniform Rapid Suspension System (URS) might not be finalized until next year.  Envisioned as a quick and inexpensive arbitration process for resolving domain name disputes (that is, cybersquatting), the URS has struggled as its anticipated costs have risen and its perceived benefits have dropped. Today, Pritz acknowledged the URS challenges, saying "Not as much progress has been made." He also indicated that although "there's time to get this implemented," doing so is not necessary until  "late in the first quarter" of 2013, when the first new gTLDs are expected to become active.

3. ICANN believes that the Uniform Domain Name Dispute Resolution Policy (UDRP) will continue to be important for trademark owners. As I have previously written, the UDRP, which has been the most effective tool for trademark owners in resolving domain name disputes, will apply to the new gTLDs when they become effective next year. Today, Beckstrom emphasized the importance of this popular tool, saying that the UDRP is a longstanding and important legal process that “is being used thousands of times each year, successfully, to protect trademark and service mark holders from other parties that register at the second level.”

Related post: 10 Things Trademark Owners Should Do on ICANN’s Domain Name ‘Reveal Day’

 

 

Frequently Asked Questions About 'Existing Legal Rights Objections'

Trademark owners who believe that a potential new top-level domain would infringe its rights may want to consider filing an "Existing Legal Rights" objection. Here are some frequently asked questions about this process.

What is the definition of an "Existing Legal Rights Objection"?

According to ICANN's gTLD Applicant Guidebook, an Existing Legal Rights Objection is an "objection that the string comprising the potential new gTLD infringes the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law."

The Guidebook includes important additional interpretation guidance for panelists deciding these objections, so those who file an Existing Legal Rights Objection should become very familiar with these principles and draft their objections accordingly.

Who can file a Legal Rights Objection?

The Guidebook broadly says: "A rightsholder has standing to file a legal rights objection." Note that all filed objections must include "[a] statement of the objector’s basis for standing; that is, why the objector believes it meets the standing requirements to object."

When can an Existing Legal Rights Objection be filed?

The Guidebook says that "[t]he objection filing period will open after ICANN posts the list of complete applications... and will last for approximately 7 months." ICANN has announced that it intends to post the list of complete applications on June 13, 2012; therefore, the last date for filing objections would be approximately January 13, 2013. Note that there will be "a two-week window of time between the posting of the Initial Evaluation results and the close of the objection filing period."

Where are Legal Rights Objections filed?

Existing Legal Rights Objections will be administered by the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO), which has published a detailed website about the process here: http://www.wipo.int/amc/en/domains/lro/

What rules are applicable to an Existing Legal Rights Objection?

The WIPO Rules for New gTLD Dispute Resolution apply to disputes filed pursuant to an Existing Legal Rights Objection.

What language is used for proceedings under Existing Legal Rights Objections?

All objections must be filed in English.

What are the fees for filing an Existing Legal Rights Objection?

In addition to any legal or other fees that an objecting party may face, WIPO's filing fees for an Existing Legal Rights Objection begin at $10,000 (U.S. dollars). This includes $2,000 for WIPO as the dispute resolution service provider and $8,000 for a single-member panelist appointed to decide the dispute.  Additional fees apply for three-member panels; and lower fees apply in the event of multiple objections filed to single applications or multiple objections filed by the same objector to multiple applications.

A gTLD applicant is required to pay the same fees and, as with all gTLD objections, "[u]pon the termination of the proceedings, after the Panel has rendered its Expert Determination, the DRSP [Dispute Resolution Service Provider, that is, WIPO] shall refund to the prevailing party, as determined by the Panel, its advance payment(s) of Costs."

What should an objector include in filing an Existing Legal Rights Objection?

ICANN's gTLD Applicant Guidebook provides very little helpful guidance about what an objector should include in its filing. Specifically, the Guidebook says that objections should include "[a] statement giving the specific ground upon which the objection is being filed" and "[a] detailed explanation of the validity of the objection and why it should be upheld." However, the Guidebook includes important criteria for panelists evaluating Existing Legal Rights Objections; accordingly, objectors should familiarize themselves with these criteria and draft their objections with the criteria in mind. Generally, the criteria include the following:

  • whether the potential use of the applied-for gTLD by the applicant takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (“mark”) or IGO name or acronym (as identified in the treaty establishing the organization), or
  • unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym, or
  • otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name or acronym

Additional detail -- including factors to be considered by panelists evaluating the above criteria -- is set forth in the Guidebook.

What is the maximum length of an objection filed under an Existing Legal Rights Objection?

As with all objections to new gTLDs, objections based on an Existing Legal Rights Objection is limited to 5,000 words or 20 pages, whichever is less (excluding attachments).

Does a gTLD applicant have to respond to an Existing Legal Rights Objection?

No. An applicant can negotiate a settlement to an objection (resulting in withdrawal of the application or the objection), file a response (see details below) or withdraw (in which case the objector will prevail by default).

If an applicant files a response to an Existing Legal Rights Objection, when must it be filed, what should it include and how long can it be?

A response must be filed within 30 calendar days of WIPO's notice of the objection. According to the Guidebook, the response should include "[a] point-by-point response to the claims made by the objector" and "[a]ny copies of documents that it considers to be a basis for the response." Like objections, responses are limited to 5,000 words or 20 pages, whichever is less (excluding attachments).

How are documents filed, and will in-person hearings be held for Existing Legal Rights Objections?

Documents should be filed electronically, and, as in all objection proceedings, "[d]isputes will usually be resolved without an in-person hearing. The panel may decide to hold such a hearing only in extraordinary circumstances." Note that this language is similar to that set forth in the Rules for the Uniform Domain Name Dispute Resolution Policy (UDRP) (which says there shall be no in-person hearings except "as an exceptional matter" as decided by a panel), and that no in-person hearings have ever been held under the UDRP (which went into effect in 1999).