The Prior Art

Is The Dot Future Now? The ABC's of the New gTLDs

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.

Do Trademark Owners Really Need to Fear a Facebook "Land Rush?"

I've received a slew of e-mails from law firms and sources over the last few days regarding Facebook's announcement that, beginning at midnight EST on Saturday, it will allow "usernames" to be tacked on to the end of the Facebook URL to create personal URLs. In other words, John Smith could have his Facebook profile set up at www.facebook.com/johnsmith.

This development is causing a minor freak-out among trademark lawyers, eager to reassure clients that they're on top of every occurrence in Internet-land. Morrison Foerster is one of several law firms that has quickly penned an advisory on "Protecting your Trademark From Facebook Username Abuse." One veteran IP lawyer from another firm wrote to me: "I think Facebook has a lot of chutzpah to do this on such short notice!"

Facebook has set up a registration form for trademark owners, and a help center about the usernames feature that specifically addresses IP rights. Domain-name tycoons who look forward to a burgeoning new market in cyber-real estate are going to be disappointed—the usernames can't be sold or transferred once claimed. Seems that Facebook is trying to make this "land rush" as non-commercial as possible.

So, for anyone concerned about controlling their trademarks on Facebook, let it not be said that you weren't warned here. The username feature goes live in just about eight hours as of this writing, at 9:01pm PST. But since Facebook "reserves the right to remove and/or reclaim any username at any time for any reason," and is publicizing trademark claim forms, it seems likely that even trademark owners who have their mark scooped up by a ne'er-do-well will be able to get them back, hopefully in short order. Sibling publication the National Law Journal reports that Facebook will have a grievance process to take down cyber-squatters.

Meanwhile, I'm staying focused on my continued Internet domination of the other Joe Mullins of the world, all of whom will have the chance to sign on and try to win control of facebook.com/joemullin at exactly 9:01pm...

No, I mean, ah, 10:01pm. Yeah, I had the time wrong earlier. Log on at exactly 10:01pm Pacific time and you might beat me to the punch.

Monday Morning Trademark Notes

Playing catch-up a bit after spending Thursday & Friday at the Federal Circuit Bench & Bar. 

It's been a tough month for shoes:

• Collective Brands, the company that owns PayLess ShoeSource and Stride-Rite, has settled a trademark infringement case brought by K-Swiss by paying $30 million; that comes on the heels of its massive loss last month.

People are talking trademarks-in-cyberspace after the ICANN decision in Paris. Internet regulators at ICANN vowed to free up more virtual real estate, and are immediately hacked by Turks, who announce "Everybody Knows Wrong." (isn't that always how these things go?)

Reaction to ICANN decision:

• CNET worries about "domain chaos."
• Trademark lawyers will stay busy, but dot-com owners "have nothing to worry about," writes Domain Name Wire.
• The LA Times quotes one consultant saying that ICANN has been "hijacked" by the "domainers" who buy & sell web real estate.
• LAT also has my vote for cleverest headline: ".sky is the .limit." Much better than the newspapers that disappointed with headlines like "dot-personaltouch."
• IP Watch has some on-the-ground reportage from Paris.