The issues surrounding new generic top-level domains (gTLDs) will be the focus of ICANN 45; the last meeting of the Internet Corporation for Assigned Names and Numbers (ICANN) scheduled for 2012. The meeting will be held in Toronto from October 13 to October 19.
gTLDs are the three or more character codes that appear at the end of an internet address (e.g. the com in .com, or the net in .net). They are also referred to as gTLD “strings”. As of January 12, 2012 ICANN began accepting applications for new gTLDs which would expand the list of possible gTLDs to include any word that a registrant wants to use, provided they pay a $185,000 (USD) fee. These new gTLDs are registered to a single person/corporation, and as such, there are some concerns from businesses about an increase in cases of cybersquatting or trade-mark infringement.
Resolving Application Issues
The registration process which will be used by ICANN in assigning these new gTLDs has been outlined, but is still subject to change. With 2000 initial applications for new gTLDs in 2012, ICANN has been put in the position of resolving conflicts between applicants applying for the same or similar gTLDs, with the evaluation process outlined in sections of the gTLD Applicant Guidebook (hereafter “Guidebook”). The Evaluation stage of the process tries to exclude applicants based on past history of cybersquatting to limit cases of bad faith registration of gTLDs (section 2.1 of the Guidebook). In addition, the Evaluation stage will take into account visual similarity between the applicant’s string, existing TLDs, other applied-for strings and reserved names (2.2.1.1 Guidebook). This similarity is determined initially by a string review panel (2.2.1.1.1 Guidebook).
If the applicant’s string is too similar to an existing TLD or to a reserved name (reserved by ICANN, list in 2.2.1.2.1 Guidebook) then the applicant with be notified that the string cannot be registered (2.2.1.1.3 Guidebook). If however, the string is merely similar or identical to another that has been applied for, then the two strings will be classified as contended. Even if a similar string is not caught by the review panel, another applicant can still formally object to it on bases which include similarity to their own string (3.2.2.1 Guidebook) or a trade-mark infringement (3.2.2.2 Guidebook). If unresolved, the applicants enter the dispute resolution process which will result, based on the opinions of a panel of experts (3.2 Guidebook), in either the objected application being rejected, or the application proceeding in the registration process (including string contention procedures, 4.1.2 Guidebook).
Resolving string contention is done through either community priority evaluation or through auction (4.1 Guidebook). Community priority evaluation is only available to applications that are classified as community-based rather than as standard applications (4.2.1 Guidebook). These applications are subject to additional qualifications when compared to “standard” applications. Therefore when contention arises, a panel can judge the worth of a particular application based on the qualifications of the community trying to register the string (4.2.2 Guidebook). Most contentions however, don’t fall under this category, and therefore are resolved by auction.
As a method of last resort for resolving contention issues, auctions are held by ICANN to determine which application will be accepted (4.3 Guidebook). The contesting parties bid on the additional price of registration of the contested string, with only the highest bidder able to move to the delegation phase of the application. All proceeds from the auction will be given to ICANN to be “used in a manner that supports directly ICANN’s Mission and Core Values and also allows ICANN to maintain its not for profit status” (4.3 Guidebook). The applicants also have the option of entering the application jointly, by modifying the application to reflect the agreement between the parties to both use the new string (4.1.3 Guidebook).
From the first list of applied-for strings (this application period ended May 30, 2012) it is clear that quite a few popular English words are contested among the new strings. ICANN 45 will be the first major opportunity for the ICANN system of resolving contested strings to be put into practice. It might also be an opportunity for ICANN to assess the advantages and disadvantages of the auction system.
When we consider what ICANN offers in these new gTLDs, the idea that any registrant can be issued almost any word based on paying a certain amount of money doesn’t fit within any of our systems of intellectual property protection. ICANN protects the public against confusion, in a similar way that trade-mark protection protects the public. Section 2.2.1.1.1 of the Guidebook states that “probability of user confusion” is the test to determine whether or not strings are too similar to each other for both to be registered. The wording is similar to that of the Trade-marks Act, which protects against consumer confusion. The main difference between the two systems is that you are more limited in a trade-mark system in the kinds of words that you can register (sections 9 and 12 for example). In ICANN’s system, very general words such as “home” or “music”, which by themselves would never qualify for trade-mark protection, are now monopolized to the highest bidder who can then control all the use of that gTLD. That makes it the only system for protecting intellectual property in the world that offers protection based primarily upon a financial transaction.
It may be that auction is the only workable final method for resolving contestation under the new gTLD system. Certainly, ICANN identifies it as a Mechanism of last resort in the guidelines in section 4.3. Once more of the contested strings are resolved, we might have a better picture for how monopolizing these new gTLDs will affect their use. It may be that many of the contesting parties in many of these cases will work out joint agreements, in order for all of them to have access to the string. Or it may be that once monopolized, the winner of these auctions will allow opponents to use the string, provided they pay an outrageous fee for the privilege. Either way, the results of these deals and auctions will be of interest to the IP community in the coming months.
Resolving Issues Post-Delegation
To address the ongoing trade-mark concerns, ICANN issued a request for information outlining a new system for protecting against cybersquatting and trade-mark infringements. This proposed Uniform Rapid Suspension System (URS) will act as a complement to the current protections offered by ICANN. This system will apply to gTLDs which have already been issued by ICANN, but may infringe a trade-mark or have been registered in bad faith. The new policy, as proposed, offers the advantage of being cheaper ($300-500 USD fee), as well as faster (no timeline yet given).
Access to the new system, however, will require clear evidence of wrongdoing by the registrant. This might allow persons less knowledgeable in the area of cybersquatting to make deal with disputes. However, it does not deliver an identical result to that of the Uniform Domain Name Dispute Resolution Policy (UDRP) which has been traditionally used by ICANN for resolving these issues. Under the UDRP, if an instance of cybersquatting is proven then the board can make an order to have the bad faith registrant assign the domain name to the complainant. The new policy, though faster, will only serve to suspend use of the domain name.
These two systems ensure that persons who did not make objections to the gTLDs during the evaluation stage can still lodge a complaint with ICANN to resolve trade-mark or cybersquatting issues. However, it may be too soon to tell whether all of the protections ICANN has offered adequately protect trade-mark holders. ICANN 45 may be an opportunity to see the level of confidence that the public and members of ICANN have with the current gTLD system, and whether changes need to be made. The IPilogue will have an editor at ICANN 45 to report on these issues as they unfold.
Adam Stevenson is a JD Candidate at Western University, faculty of law.