While current economic conditions have most companies focused on budgetary matters, the Internet Corporation for Assigned Names and Numbers ("ICANN") continues to push forward with its efforts to dramatically increase the quantity and velocity in which new domain name extensions ("New gTLDs') are launched and available to the public for registration.  The introduction of New gTLDs will pose both new opportunities and risks for brand owners.  Thus, it is important to both get-up-to speed on what is going on with this game-changing initiative and understand next steps in the process to ensure your company is not left behind in the new cyberspace.

Background

In late October, 2008, ICANN, which is the organization responsible for governing the global domain name system, released draft policy documents known as "New gTLD Program: Draft Applicant Guidebook"  ("DAG") that laid out a framework of policies and application procedures that would bring about landmark changes to the current size and operation of the current Internet naming system.  Currently, there are only 21 active generic top-level domain (gTLD) extensions (examples are: .com, .net, .org, .info, .biz) and 249 country-code top level domain (ccTLD) extensions (examples are .ca, .fr, .de, .us, .uk) available for registration. Under ICANN's New gTLD initiative, hundreds of new gTLDs could be introduced over the next two years, including brand-specific domain extensions like .yourcompanyname, industry-related domain extensions like .sports and geographically-related domain extensions like .berlin.

During the Public Comment period on the first draft of the DAG, which ran through January 7, 2009, Internet users from more than 24 countries submitted over 300 public comments (see comments submitted by CSC by clicking here); more comments than ICANN had ever received on any other prior initiative.    The key concerns raised by commenters were:

• Brand protection issues and the impact on brands and trademark owners;
• Financial considerations, including evaluation fees, ongoing registry fees, and refund procedures
• Various issues surrounding the proposed registry agreement, particularly, price controls, registry/registrar separation, the management of future agreement amendments, equitable treatment, and others; and
• General comments and concerns related to expanding the top level and its impact on the global marketplace, specific industries and Domain Name System stability.

Despite heated debate regarding the future of New gTLD initiative, ICANN released a revised version of DAG for Public Comment on February 18th.  This version was accompanied by a statement from Dr. Paul Twomey, CEO and President of ICANN, which outlined four “overarching issues” that required further work and consultation before any additional revisions would be made to the DAG in these areas.  The four “overarching issues” cited by Dr. Twomey were:

• Trademark protection
• Security and stability
• Malicious conduct
• Demand and economic analysis

This announcement received mixed response across the Internet Community.  Many trademark owners were pleased to hear ICANN was willing to seek additional input on these issues before proceeding, however, those who have been involved with the development of ICANN initiatives in the past remained skeptical that the additional time and effort would ultimately lead to a result that would not unduly burden rights holders.  On the other hand, those interested in geographic TLDs (i.e., .berlin), linguistic TLDs (.gal), Internationalized Domain Name (IDN) New gTLDs, entrepreneurs and social causes with ready-to-go-business plans (i.e., .eco) saw the announcement that applications would not be accepted until at least December 2009 to enable time for this additional work and consultation by ICANN as yet another delay in an initiative that had been in the works since as early as 2005.

What’s Going on Now

From March 1-6, 2009, over one thousand people, including a representative of CSC, gathered in Mexico City for ICANN’s 34th Public Meeting where the debate on New gTLDs continued.   Throughout the workshops, public forums, constituency and supporting organization meetings, most agreed there were issues that needed further work, but agreement ended when the discussion turned to how to proceed.  ICANN was repeatedly asked to allow certain types of gTLDs, like IDN New gTLDs and linguistic TLDs, that would provide greater Internet access for non-English speakers to move forward while additional work was done on the “overarching issues”, but the ICANN Board and Staff uniformly dismissed that possibility due to concerns that policies developed after launch of these TLDs would have to be retroactively applied. 

As the week wore on, ICANN continued to acknowledge the concerns raised by brand owners in the new gTLD initiative, but made it increasingly clear that they were looking to the IP community to come forward with a solution to the trademark protection issues.  In response to this demand by ICANN, the Intellectual Property Constituency (IPC) proposed that ICANN cover travel costs and provide staff support to an “Implementation Resolution Team (IRT) “…comprised of an internationally diverse group of persons with knowledge, expertise, and experience in the fields of trademark, consumer protection, or competition law, and the interplay of trademarks and the domain name system to develop and propose solutions to the overarching issue of trademark protection in connection with the introduction of new gTLDs.”  On March 6, 2008, the ICANN Board unanimously passed the following resolution:

Whereas, based on the public comment submissions received regarding the New gTLD Draft Applicant Guidebook, ICANN Staff has determined that the implementation issues involving trademark protection need additional community input and analysis. These issues exist today within the existing gTLDs.

Whereas, members of the community with knowledge and expertise in this area have proposed a way to synthesize the comments received in this area, and, with input from the broader community, including WIPO, propose solutions to the Staff on these issues in a timely manner.

Whereas, the board recognizes that resolution of these issues would be beneficial to the introduction of new gTLDs, it is

Therefore resolved (2009.03.06.06), that the Board requests the GNSO's Intellectual Property Constituency in consultation with staff to convene an Implementation Recommendation Team comprised of an internationally diverse group of persons with knowledge, expertise, and experience in the fields of trademark, consumer protection, or competition law, and the interplay of trademarks and the domain name system to develop and propose solutions to the overarching issue of trademark protection in connection with the introduction of new gTLDs.

It is further resolved that the Implementation Recommendation Team will be comprised principally from the organizations and persons that proposed such solutions in the public comment period on the first draft Applicant Guidebook, and the Implementation Recommendation Team would use the solutions proposed in the public comments as its starting point for development.

The board directs the Implementation Recommendation Team to solicit input from the interested constituencies prior to its first session to ensure broad community input at the outset of its work.

The board further directs (i) staff to provide a dedicated staff person and additional staff resources as staff determines to facilitate the work of the Implementation Recommendation Team, and (ii) reasonable travel support be provided to up to fifteen members of the Implementation Recommendation Team for the purpose of conducting two face-to-face meetings in hub cities.

The board further requests that the Implementation Recommendation Team (i) distribute its draft report by 24 April 2009 to interested members of the community for comment, and (ii) produce a final report to be published no later than 24 May 2009 for consideration by the ICANN community at the Sydney meeting.

Efforts to compose the IRT have been underway over the last 2 weeks and are now nearing completion.

The Next Step for Brand Owners

With all eyes on the IRT, the next few months will prove to be critical for trademark rights protection in the new cyberspace. So what can brand owners do now to prepare their organizations for both the opportunities and risks that lay ahead in the new cyberspace.  CSC recommends the following:

1. Educate your internal business stakeholders and/or Board about ICANN’s New gTLD Initiative. Now is the time to bring together your Legal, Marketing, IT, and Business/Product Development teams to make sure they know about ICANN’s New gTLD initiative and take your organizations’ “temperature.”  Is your organization one who may want their own TLD?  Do you want it purely defensive purposes or can you think of ways it be used to expand your brand and/or business online?  CSC has developed an easy-to-use New gTLD Toolkit supported by assistance from one of our industry experts that can be used to get your internal business stakeholders and Board up-to-speed on all the basics and things to consider. To receive a copy, e-mail newgtlds@cscinfo.com. 

2. Submit Public Comments. The second public comment period on the DAG is now underway and will close on April 13, UTC.  To view a copy of the current version of the DAG, go to: http://www.icann.org/en/topics/new-gtlds/comments-2-en.htm#expmem.  CSC will be convening a group of interested parties to discuss the current version of the DAG the week of March 30th to develop a public comment statement for endorsement to submit to ICANN’s Public Comment Forum.  If you are interested in taking part in this online meeting and sharing your thoughts, please e-mail newgtlds@cscinfo.com.

3. Subscribe to our New gTLD mailing list.  Subscribe to CSC’s special New gTLD mailing list and be sure to receive up-to-the-minute updates on all that is going on with ICANN’s New gTLD initiative. E-mail us at newgtlds@cscinfo.com to request to be added.

4. Send CSC your Questions & Commentary about New gTLDs.  CSC is often called upon take part in industry work groups and review committees related to the interplay of domain names and Intellectual Property rights.  Oftentimes, we are subject to extremely tight deadlines to turn around our review and commentary in response to these requests.  Thus, if you are unable to submit public comments or have a concern you would like to share that we can incorporate when providing feedback when requested, we would welcome the opportunity to help you have your voice heard.  Please submit questions and commentary to newgtlds@cscinfo.com.