Registering Marks As Top-Level Domain Names

The Process

The application asks 50 questions about the applicant and its financial, technical and operational capability to support the gTLD. Upon the submission period's closing, ICANN will check an application to ensure completeness. Next is the “Initial Evaluation” (“IE”) phase, during which ICANN will determine whether the gTLD string presents security or stability problems in the domain-name system, including problems caused by similarity to existing TLDs or reserved names; and whether financial, technical and operational means that ICANN deems necessary exist.

The similarity standard is whether the gTLD so nearly visually resembles another TLD or applied-for name that it is likely to deceive or confuse if it were accepted, based on the perception of an average, reasonable, Internet user. Probable, not possible, likelihood of confusion is required; a mere association that the gTLD brings to mind another TLD is insufficient.

ICANN expects the initial evaluation phase to be completed within five months, assuming that about 400 applications are filed; a longer period is expected if more applications are filed.

Objection Period

Assuming the application passes the initial evaluation, an objection period is next. Objections must be filed with dispute-resolution service providers, not with ICANN. The objection period will last for a short two weeks after ICANN publishes its initial evaluation results. Any third party may file an objection during this period. The gTLD applicant will be able to respond.

Four grounds of objection are available, namely, that:

• The gTLD creates string confusion ' i.e., is confusingly similar to another TLD or gTLD name applied for;
• It infringes upon legal rights;
• It is contrary to morality and public order; and
• The community to which the gTLD is targeted has substantial opposition to its registration.

Standing Requirements

Standing requirements are also provided for. A string-confusion objector must be an existing TLD operator or gTLD applicant. A rights holder may assert only legal rights. Anyone may pose a morality and public-order objection, and only an “established institution” may file a community-based objection. An “independent objector” ' to be selected by ICANN ' will be able to assert claims on behalf of the public's morality, public-order and community-based objections.

In some cases, more than one qualified applicant may seek the same or a similar gTLD, which ICANN refers to as “string contention.” If not settled, such cases generally will be resolved through an auction unless the applicant is “community-based” and elects an evaluation through a “community priority.” If competing applications exist for string sets, all will have to pass ICANN's initial evaluation and dispute resolution before ICANN's string-contention resolution process begins.

Concluding Steps

Assuming an application passes the initial evaluation, dispute-resolution and string-contention phases, it next faces a series of “concluding steps,” including the execution of a registry agreement with ICANN and technical testing, within a time frame yet to be set. Upon completion, the gTLD will be ready for use.

Global Mark Protection

To accommodate owners of global marks seeking to prevent spurious registration of gTLDs that infringe on their rights, ICANN will implement an “IP Clearinghouse”: a repository for trademark rights, including unregistered marks, globally protected marks, trade names and family names. It is designed to be the central entity with which all new gTLD registries, and possibly registrars, interact for a mechanism for protecting rights in a variety of marks and names. A list of trademarks that are globally protected is intended to block registration of gTLDs or second-level domain names that match a mark on it. The list in current form is available only for marks registered in all five world regions designated by ICANN.

Establishing Trademark Rights

Trademark strategies can help position a trademark owner with competing gTLD applicants and ICANN. Essentially, a company should create trademark rights for domain-name registry services to thwart competing applicants from registering and using the same or confusingly similar gTLDs, and to put pressure on ICANN not to register them.

Under 15 U.S.C. 1051(b), a trademark-registration application may be filed based on a bona fide intention to use. Upon filing, an inchoate nationwide priority right arises for the mark as applied to the goods or services in the application. After an application completes prosecution and opposition phases, the U.S. Patent and Trademark Office (“USPTO”) generally will register the mark after receiving evidence of its actual use. Actual use of a gTLD is now possible without involving ICANN and its root servers, through others, such as name.space. Upon registration on the Principal Register, the nationwide priority right is fixed. The process can be completed within 12 to 18 months.

Notably, if a company files its trademark application before ICANN registers a competing gTLD and that gTLD is used, superior trademark rights will be gained against the competing gTLD applicant upon subsequent registration of the mark.

Foreign Rights

A similar approach is available for foreign rights. The Madrid Protocol provides a means to protect trademarks abroad without the expense of separate national applications. One may, based upon its U.S. application, file a Madrid Protocol application to obtain an international registration (“IR”). The IR can protect the mark in many countries. If a Madrid Protocol application is filed within six months of the U.S. filing, it receives the U.S. filing date.

IRs issue within four to five months. Upon issuance, a trademark owner has rights to assert in those countries designated in the IR. Although a U.S. owner cannot assert an IR in the United States, it can assert one in countries the IR covers. Major-market countries that are IR-worthy are:

• Germany;
• The United Kingdom;
• France;
• Japan;
• Australia; and
• China.

If an IR must be enforced, then the country in which the laws are most favorable against the competing gTLD can be used.

Infringement threats in foreign markets can be quite significant and could result in the withdrawal of a competing gTLD application. Alternatively, the IR can result in a bargaining chip for settlement with the competing applicant.

Although ICANN has U.S. government affiliation, it does not enjoy sovereign immunity from infringing trademarks. Under 15 U.S.C. 1114(1), the U.S. government, including all its agencies, can be sued for infringement. Were ICANN sued abroad and it asserted sovereign immunity, then foreign courts would have little incentive to disagree with our law.

The Internet Corporation for Assigned Names and Numbers (“ICANN”) plans to issue generic top-level domain names (“gTLDs”) beyond the current 21 top-level domain names (“TLDs”) such as .com and .net.

For the first time, trademark owners may use their marks as gTLDs; for example, .nike. The application process is complex, and trademark owners have no guarantee that they will secure gTLDs for their marks. e-Commerce providers, however, can use trademark-law strategy to gain advantages during the application process.

The proposed gTLD application appears in the complex Draft Applicant Guidebook (3d Rev. Oct. 2, 2009, available at www.icann.org/en/topics/new-gtld-program.htm). Once ICANN establishes an application-submission period, applications must be submitted to ICANN electronically, with a wire-transfer payment of $185,000. “Established” corporations, organizations or institutions “in good standing” may apply, but not individuals or sole proprietorships.

The Process

The application asks 50 questions about the applicant and its financial, technical and operational capability to support the gTLD. Upon the submission period's closing, ICANN will check an application to ensure completeness. Next is the “Initial Evaluation” (“IE”) phase, during which ICANN will determine whether the gTLD string presents security or stability problems in the domain-name system, including problems caused by similarity to existing TLDs or reserved names; and whether financial, technical and operational means that ICANN deems necessary exist.

The similarity standard is whether the gTLD so nearly visually resembles another TLD or applied-for name that it is likely to deceive or confuse if it were accepted, based on the perception of an average, reasonable, Internet user. Probable, not possible, likelihood of confusion is required; a mere association that the gTLD brings to mind another TLD is insufficient.

ICANN expects the initial evaluation phase to be completed within five months, assuming that about 400 applications are filed; a longer period is expected if more applications are filed.

Objection Period

Assuming the application passes the initial evaluation, an objection period is next. Objections must be filed with dispute-resolution service providers, not with ICANN. The objection period will last for a short two weeks after ICANN publishes its initial evaluation results. Any third party may file an objection during this period. The gTLD applicant will be able to respond.

Four grounds of objection are available, namely, that:

• The gTLD creates string confusion ' i.e., is confusingly similar to another TLD or gTLD name applied for;
• It infringes upon legal rights;
• It is contrary to morality and public order; and
• The community to which the gTLD is targeted has substantial opposition to its registration.

Standing Requirements

Standing requirements are also provided for. A string-confusion objector must be an existing TLD operator or gTLD applicant. A rights holder may assert only legal rights. Anyone may pose a morality and public-order objection, and only an “established institution” may file a community-based objection. An “independent objector” ' to be selected by ICANN ' will be able to assert claims on behalf of the public's morality, public-order and community-based objections.

In some cases, more than one qualified applicant may seek the same or a similar gTLD, which ICANN refers to as “string contention.” If not settled, such cases generally will be resolved through an auction unless the applicant is “community-based” and elects an evaluation through a “community priority.” If competing applications exist for string sets, all will have to pass ICANN's initial evaluation and dispute resolution before ICANN's string-contention resolution process begins.

Concluding Steps

Assuming an application passes the initial evaluation, dispute-resolution and string-contention phases, it next faces a series of “concluding steps,” including the execution of a registry agreement with ICANN and technical testing, within a time frame yet to be set. Upon completion, the gTLD will be ready for use.

Global Mark Protection

To accommodate owners of global marks seeking to prevent spurious registration of gTLDs that infringe on their rights, ICANN will implement an “IP Clearinghouse”: a repository for trademark rights, including unregistered marks, globally protected marks, trade names and family names. It is designed to be the central entity with which all new gTLD registries, and possibly registrars, interact for a mechanism for protecting rights in a variety of marks and names. A list of trademarks that are globally protected is intended to block registration of gTLDs or second-level domain names that match a mark on it. The list in current form is available only for marks registered in all five world regions designated by ICANN.

Establishing Trademark Rights

Trademark strategies can help position a trademark owner with competing gTLD applicants and ICANN. Essentially, a company should create trademark rights for domain-name registry services to thwart competing applicants from registering and using the same or confusingly similar gTLDs, and to put pressure on ICANN not to register them.

Under 15 U.S.C. 1051(b), a trademark-registration application may be filed based on a bona fide intention to use. Upon filing, an inchoate nationwide priority right arises for the mark as applied to the goods or services in the application. After an application completes prosecution and opposition phases, the U.S. Patent and Trademark Office (“USPTO”) generally will register the mark after receiving evidence of its actual use. Actual use of a gTLD is now possible without involving ICANN and its root servers, through others, such as name.space. Upon registration on the Principal Register, the nationwide priority right is fixed. The process can be completed within 12 to 18 months.

Notably, if a company files its trademark application before ICANN registers a competing gTLD and that gTLD is used, superior trademark rights will be gained against the competing gTLD applicant upon subsequent registration of the mark.

Foreign Rights

A similar approach is available for foreign rights. The Madrid Protocol provides a means to protect trademarks abroad without the expense of separate national applications. One may, based upon its U.S. application, file a Madrid Protocol application to obtain an international registration (“IR”). The IR can protect the mark in many countries. If a Madrid Protocol application is filed within six months of the U.S. filing, it receives the U.S. filing date.

IRs issue within four to five months. Upon issuance, a trademark owner has rights to assert in those countries designated in the IR. Although a U.S. owner cannot assert an IR in the United States, it can assert one in countries the IR covers. Major-market countries that are IR-worthy are:

• Germany;
• The United Kingdom;
• France;
• Japan;
• Australia; and
• China.

If an IR must be enforced, then the country in which the laws are most favorable against the competing gTLD can be used.

Infringement threats in foreign markets can be quite significant and could result in the withdrawal of a competing gTLD application. Alternatively, the IR can result in a bargaining chip for settlement with the competing applicant.

Although ICANN has U.S. government affiliation, it does not enjoy sovereign immunity from infringing trademarks. Under 15 U.S.C. 1114(1), the U.S. government, including all its agencies, can be sued for infringement. Were ICANN sued abroad and it asserted sovereign immunity, then foreign courts would have little incentive to disagree with our law.