Last week, the House Judiciary Subcommitte on Intellectual Property, Competition, and the Internet held a hearing on ICANN's new generic top-level domain (gTLD) program, which would greatly expand the number of Internet suffixes to potentially include anything and everything from .music to .cars. At the hearing, congressmen from both sides of the aisle, as well as trademark owners, expressed concerns about the new proposal, ranging from the costs to the potential for trademark infringement.
Jeff Neuman, the VP for Law and Policy at Neustar -- a company that is serving as the technical registry backend provider for many new top-level domains -- attended the congressional hearing. As the head legal counsel for all the domain name registries, mobile registries, and media services at Neustar, and as the Vice Chair of the Generic Name Supporting Organization, a council that is part of ICANN's policy arm, Neuman is well acquainted with the new gTLD process. He agreed to help get Prior Art readers up to speed. The following is an edited transcript of our phone conversation:
The Prior Art (TPA): Who can apply to create and run a new gTLD?
Jeff Neuman: This new round of generic top-level domains (gTLDs) is the first unlimited round that they’re opening pretty much ever. So technically, it’s open to anyone. There are no restrictions on who applies. But it’s a very stringent process that’s been developed over the last seven years through ICANN’s policy development process and through consultations with governments around the world, intellectual property attorneys, and a whole host of industry associations and groups. There is a significant barrier to entry in the application fee itself. In order to apply, you have to pay ICANN an application fee of $185,000. Because of that, we see two types of applications: One type is for very large companies and large brand owners to expand their presence online, as a great marketing tool for those large companies. We also see, somewhat to a lesser extent, a market there for new generic spaces, whether that be for a .web, a .music, or a .hotel. So you can have some very generic spaces like that, but also a number of corporations have come forward that have expressed an interest in applying for a new gTLD to represent their company. Companies that have already come forward include Canon, Hitachi, and IBM.
TPA: Are there any limits on what can be registered as a new gTLD?
Neuman: It’s anything under the sun up to 63 characters. Remember, this is all to the right of the dot, so this is all at the top-level.
TPA: So how will ICANN decide which gTLDs will be chosen?
Neuman: There is a 350-page applicant guidebook that is in the final revision state. ICANN is supposed to come out with its very final one on May 30. There are a bunch of objective criteria that they have to use and they really try to make it as objective as possible so as not to bring any subjectivity into the decisionmaking of saying, well, we like the example of a .television and a .radio but we don’t like the example of .law. It’s really not up to ICANN to make subjective decisions as to what words or strings they allow. It’s more of looking at who is the applicant. Does the applicant have the financial, technical, business wherewithal to actually run a top-level domain? For those that claim to represent what’s called a community, do they have community support to run that top-level domain?
TPA: What about the potential for trademark infringement if one company registers a gTLD containing the trademark of another company?
Neuman: If I wanted to apply for someone else’s trademark – For example, if I wanted to apply for a .apple and I’m not the Apple corporation, and I’m doing it in a way that infringes on Apple’s trademarks -- there’s a process for [the trademark owner] to come in and object to that. There are rules and restrictions. If I wanted to apply for something that’s deemed to be morally objectionable by governments or by certain classes of citizens, then there’s an objection process as well for that to make sure that I don’t apply for something like a .nazi, to make sure that governments are okay with what’s being proposed.
TPA: Isn’t it going to be difficult for trademark owners to protect their trademarks? Won't they potentially have to police a very large number of these new domains?
Neuman: I think trademark owners definitely need to be paying attention to what’s going on, whether they are applying themselves for a top-level domain or whether they have to monitor their brand online to make sure it’s not being abused by other parties. To that end, and I’ve actually personally been involved in a number of these efforts, ICANN has taken some great pains in the last seven years to come up with a whole bunch of mechanisms to protect trademark owners both at the top-level and at the second level.
At the top-level – meaning at the right of the dot – there’s an objection process for trademark owners to use if they believe there’s a string that’s going to be used as a top-level domain infringing their marks. But at the second level as well, meaning if there’s a .web or .music or something generic that they want to police their brands in, there’s a whole bunch of mechanisms that have been developed by IP attorneys and other members of the community to help trademark owners who want to police their brands.
There are things like a thick Whois. Whois is actually the database of registrar information that trademark owners and others can look up to see who owns a domain name. Each registry maintains a centralized whois database.
There’s also something called the Uniform Dispute Resolution Policy (UDRP) that already exists, which is an alternative dispute mechanism to go after what’s called cybersquatting. Even that we’ve improved on by creating a new process called the URS – which stands for Uniform Rapid Suspension program. The URS is a cheaper, more efficient, faster way to go after clear-cut cases of cybersquatting. There’s also what’s called a mandatory sunrise program, which allows trademark owners in every single top-level domain to go in first and register their brand.
There’s also a trademark claims process, which actually I helped create, where someone who wants to register a domain name will be notified that there’s a trademark owner that has a claim in that name or that has trademark rights in that name, so that the person who’s applying knows about the trademark owner’s rights. It can still proceed, but if it does proceed it has to make certain representations and warranties that it will not infringe the rights of the trademark owner. And if it does proceed with the registration, the trademark owner will be notified that that party has received the notification and proceeded anyway to register the name, and it will also be given the contact information of the party.
TPA: Won't the process be prohibitively expensive for trademark owners, particularly for startups and non-profit organizations that will have to register for multiple new gTLDs?
Neuman: I think if you look at everything in today’s terms, because there’s a scarcity of top-level domains, especially in the generic space, I think there’s certainly a belief by trademark owners that in order to adequately police their mark they’re going to have register at every top-level domain. Trademark owners do have an obligation to take reasonable steps to protect their trademarks. Some trademark owners have read that requirement under trademark law to mean that they have to register in every single gTLD. I think because there’s so few now, trademark owners generally tend to register in every GTLD. What I think you will see happen, both out of necessity from budgeting but also just as logic dictates, is that trademark owners are going to be very selective in the GTLDs that they apply for. So environmental organizations will likely apply in .green, and there are benefits to do so, but I don’t think that the environmental groups will necessarily apply for a .music or a .shoes.
TPA: Is cybersquatting going to be a concern with the new gTLDs the way it was in the mid 1990s?
Neuman: I don’t think it’s going to be like the mid-90s. I think there’s a lot of case law out there that has been well proven in court and through these dispute resolution mechanisms that have certainly been a huge deterrent to what we think of today as cybersquatting. I think most of the people buying domain names now are aware of those. I don’t think we’re going to see a huge amount of squatting.
In fact, there’s been studies out there that have looked at this issue. 90% the UDRP cybersquatting cases that are heard today are in .com and .net. You don't really see the explosion of cybersquatting cases in .biz and .info, and .travel and .tel and .name and .pro. When each of these tlds came out in 2001 and 2005, you did not see a huge number of cases filed against squatters in those name spaces. I think it’s just the general law of supply and demand. If you’re going to increase the supply to have many more top-level domains, I think you’re going to place less of a value on having a .com or a .net name. Since names are going to be of less value to a squatter, I don’t think you’re going to see as much of an incidence of squatting. But in cases where there is squatting, there are all these additional mechanisms that have been put in place to protect trademark owners.
TPA: What is the timeline for launching the new gTLDs?
Neuman: If everything holds true, June 20 is when the ICANN Board will approve the final version of the guidebook, which would start a communication period – a 4 month period by which ICANN is going to heavily publicize their new process and all the information about the new process. By late October or early November, ICANN will begin accepting applications for new top-level domains. That application period is going to be 60 days. Hopefully by the end of the year, all applications will be in. Then ICANN, after doing administrative checks to make sure that all the applications are complete, will post the non-confidential portions of the applications somewhere around February or March. From there, the time period for approval will depend on the complexity of the application, whether there are multiple applicants for the same string, and whether there are objections to those strings. We estimate that the earliest a TLD will be approved by ICANN is somewhere around July or August 2012, with a launch of a top-level domain in either the fourth quarter of 2012 or the first quarter of 2013. So it is quite a lengthy process, and that’s only for a simple application. If there are multiple parties applying for the same string, or objections, or complexities within the technical application itself, you could look at this application process taking about 20 months from the date the application was submitted. So you’re talking about maybe 2014 or 2015 before some of the more controversial ones are out there for consumers.
TPA: Several Congressmen from both sides of the aisle, as well as trademark owners, expressed concerns about the domain name proposal at a House subcommittee hearing last week. Is there anything Congress can do legislatively? Do you think it could delay the process?
Neuman: I was at the House hearing last week. I will say that the panelists were all pretty much representing one side of the equation. I don’t think they had a panel with those interested in these top-level domains represented. But that said, this has been a seven year process in the making. There have been countless draft guidebooks that have been out there. There have been a number of processes since 2005 that are geared toward creating these intellectual protections. Certain intellectual property owners will always be opposed to an expansion of the name space regardless of what’s put in there. So I don’t see that as having a huge effect on the process.
Is there anything Congress can do? I don’t think there’s a legislative solution for Congress. I think the US government as well as other governments of the world are represented in ICANN through the government advisory committee (also called the GAC), and certainly the US Dept of Commerce has been very active in the GAC in representing the views of the US government and of trademark owners, and they have done a great job. I think at this point because ICANN is setup to receive input from governments around the world (despite being a non-profit based in CA), I think that for the US government to unilaterally take any kind of action would not be seen favorably by other governments around the world that are working within the ICANN process on the new GTLDS. I think all of the points expressed by Congress last week have been made to the community and to the ICANN. I don’t think any one government alone is going to have an effect on changing the outcome.
TPA: What advice do you have for in-house counsel currently navigating the gTLD process?
Neuman: They should bring in their marketing departments so that they know what the options are in applying for top-level domains, and to help set their global protection strategy with respect to the new global domains that are launched. We’ve been doing a bunch of presentations for in-house counsel and marketing groups. It’s really to become educated about the program. There is a sense of urgency that is out there because this process is open this year, but it’s kind of a one shot deal for this year for that 60-day period when applications are open. We don’t believe that there will be another application period for at least another 4 or 5 year period after that because of how long the application process takes. So it’s very important for [companies] to make a decision about whether to proceed or not because if they don’t proceed this year they may not have an opportunity for several years out.