By Doug Isenberg
Soon after revealing the list of 1,930 potential new global top-level domain names (gTLDs), ICANN tried to reassure trademark owners that they will be protected as the gTLD applications are evaluated (starting in July) and after the approved gTLDs become active (next year).
While trademark owners may disagree with how effectively their brands will be protected, ICANN emphasized what CEO Rod Beckstrom called “extensive intellectual property provisions” in the new gTLD program. Although no new trademark provisions were announced on ICANN’s “Reveal Day” disclosing the applied-for gTLDs (nor were any expected), at least three important lessons were learned:
1. The Trademark Clearinghouse (TMC) will begin accepting applications in October. As previously known, the TMC will serve as a “central repository” for information about trademarks that will come into play during the “sunrise” registration periods of second-level domain names within the new gTLDs (such as, brand.gtld) and during the initial period of general registrations. ICANN had recently announced that IBM and Deloitte would serve as the TMC’s service providers and that registrations might cost trademark owners about $150 per submission. Today, ICANN Senior Vice President Kurt Pritz made clear: “We intend to start taking registrations of trademarks in the Clearinghouse in October.”
2. The Uniform Rapid Suspension System (URS) might not be finalized until next year. Envisioned as a quick and inexpensive arbitration process for resolving domain name disputes (that is, cybersquatting), the URS has struggled as its anticipated costs have risen and its perceived benefits have dropped. Today, Pritz acknowledged the URS challenges, saying “Not as much progress has been made.” He also indicated that although “there’s time to get this implemented,” doing so is not necessary until “late in the first quarter” of 2013, when the first new gTLDs are expected to become active.
3. ICANN believes that the Uniform Domain Name Dispute Resolution Policy (UDRP) will continue to be important for trademark owners. As I have previously written, the UDRP, which has been the most effective tool for trademark owners in resolving domain name disputes, will apply to the new gTLDs when they become effective next year. Today, Beckstrom emphasized the importance of this popular tool, saying that the UDRP is a longstanding and important legal process that “is being used thousands of times each year, successfully, to protect trademark and service mark holders from other parties that register at the second level.”