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Allens Arthur Robinson

Focus: Domain Names – July 2008

New generic top-level domains and non-Latin script

In brief: On 26 June 2008, the Internet Corporation for Assigned Names and Numbers approved recommendations that will allow for a significant increase in the number of generic top-level domains. Implementation of the recommendations will see the registration of generic top-level domains become far more accessible to corporations and communities. The changes will also have a significant impact internationally and within Asia, with the adoption of recommendations to support the use of non-Latin characters in both generic top-level and country code top-level domains. Partner Michael Pattison (view CV), Lawyer Adrian Fisher and Research Assistant Margaret Walsh look at what is involved.

How does it affect you?

  • Companies may soon be able to apply for new generic top-level domains (gTLDs) relevant to their brand (eg www.aboutus.brandname) and, potentially, other aspects of their business, such as their marketing strategy. Companies should monitor the development of new gTLDs and decide whether they wish to register a gTLD, or domain names within a gTLD, either defensively or in order to attract customers.
  • Companies should be aware of any trade mark protection sunrise periods implemented in new gTLDs and ensure that relevant IP rights are registered so as to take advantage of these periods.
  • The proposed changes allow for the creation of gTLDs comprising non-Latin script (eg Chinese, Korean, Japanese, Arabic script), subject to the availability of that script. Companies interested in obtaining registration in other languages should consider ensuring that they have trade mark registrations in the appropriate script and country.
  • The Internet Corporation for Assigned Names and Numbers (ICANN) is still developing a long-term policy for the use of non-Latin script in country code top-level domains (ccTLDs). However, it intends to introduce a 'fast-track' process that will allow for the creation of a limited number of non-contentious ccTLDs using non-Latin script.

Background

gTLDs are top level domains, such as .com, .org and .edu, consisting of a collection of characters (collectively known as a string of characters, or simply as a string). There are currently 21 registered gTLDs. This number has increased quite significantly since 2000 following several successful rounds of applications to register new gTLDs (such as .biz, .info, .name etc). Applications have been required to meet certain technical and string criteria. The ability to register new gTLDs is seen as crucial to the promotion of competition, consumer choice and geographical and service-provider diversity. It is also seen as necessary to fulfil the growing demand for Internet 'real estate'.

The potential market for new gTLDs is vast. It has been suggested that companies may wish to register their name, or other trade marks, as gTLDs. It is also envisaged that interested entities will wish to register names of communities or geographic areas, such as states or cities.

Since 2005, the Generic Names Supporting Organisation (the GNSO), a supporting organisation of ICANN, the Internet regulator, has been investigating and considering the policy issues relating to the introduction of new gTLDs. The GNSO finalised its report on the issue in September 2007. That report included 19 recommendations, as well as a number of guidelines for their implementation. ICANN's Board accepted all of these 19 recommendations at its June 2008 meeting in Paris and directed that a final implementation plan be drafted and presented to it.

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What do the gTLD recommendations provide?

The GNSO's report outlines requirements for the approval of new gTLDs and sets out requirements for both the string of a proposed gTLD (the string requirements) and the applicant of a new gTLD (the applicant requirements).

GNSO's principal recommendation is that all applications for new gTLDs must be evaluated against 'transparent and predictable' criteria that have been published before the opening of applications. The evaluation and selection process must conform with the principles of 'fairness, transparency and non-discrimination'.

The string requirements include that a proposed gTLD must not:

  • be confusingly similar to an existing gTLD or identical or confusingly similar to a 'reserved word' (proposed reserved words include the words 'example' and 'test' and words that include symbols other than the hyphen);
  • infringe the existing, recognised legal rights of others (for example trade mark rights and freedom of expression rights);
  • cause any technical issues that threaten the stability and security of the Internet; and
  • be contrary to generally accepted legal norms relating to morality and public order that are recognised under international principles of law.

The applicant requirements include that an applicant for a new gTLD must be able to demonstrate its:

  • technical capability to run a registry for the proposed gTLD; and
  • financial and organisational operational capability.

Among the other requirements set out by the GNSO are a number of requirements that benefit applicants, including that the initial registry agreement term must be of a commercially reasonable length and there must be an expectation of the renewal of that agreement.

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How will legal interests be protected?

Although the dispute resolution processes have not been finalised, it appears from both the GNSO implementation guidelines and presentations made at the recent meeting of ICANN's Board that applications will only be assessed for string confusion, infringement of existing legal rights or being contrary to morality and public order if an objection has been received. An objection may also be made against a proposed gTLD on the grounds that there is substantial opposition to it from a significant portion of the community to which the string is targeted.

It is envisaged that such an objections mechanism will protect intellectual property rights holders as well as governments, religious organisations, geographically based communities and indigenous groups. Objections will be treated as disputes between the applicant and the objector, and may be resolved by an external dispute resolution provider appointed by ICANN.

In addition to the objections-based system, the registries of some new gTLDs may choose to provide additional protection. One way in which this may occur is through the implementation of a sunrise period for trade mark owners. Under policies for the registration of domain names under several recently introduced gTLDs (such as .info), trade mark owners were given priority for a certain period based upon the existence of a registered trade mark. It is likely that new gTLDs will implement similar protection. If companies wish to take advantage of this protection they should ensure that their relevant rights are registered prior to the gTLD opening for registrations.

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Cost of registering a new gTLD

The cost of registering a new gTLD is yet to be determined. While ICANN has resolved to set registration costs so as only to cover the costs of the registration system, the fees may still prove prohibitive for many interested parties with the cost of administering the system estimated to be up to A$10 million per year. Further, a successful gTLD applicant would be required to act as the registry for that gTLD and would accordingly be responsible for administering the use of the gTLD. The administration of a gTLD also requires a substantial amount of infrastructure and maintenance.

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Registration of domains within new gTLDs

While the applicant for a new gTLD will be responsible for administering and maintaining a registry in respect of that gTLD, the applicant must use an ICANN-accredited registrar in registering domain names within that gTLD. When a user wishes to register a domain name they will contract directly with the registrar. The registrars themselves may develop rules that will govern domain names within the gTLD, although many of these rules (particularly in relation to registration criteria and compulsory dispute resolution procedures) would generally be established at the registry level in consultation with ICANN.

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Potential issues and concerns with new gTLDs

One of the major concerns that has emerged from the possibility of new gTLDs is that of increased cybersquatting. It is possible that cybersquatters may either:

  • attempt to register a trade mark or other name as a gTLD; or
  • attempt to register a trade mark or other name as a domain within a range of new gTLDs.

It appears that either type of registration could be challenged by an interested party (either via a gTLD objection mechanism, or via a UDRP-based system of dispute resolution applied to new gTLDs).

While the practice of cybersquatting is not new, and far from insurmountable under proposed dispute resolution and objection systems, it is clear that the introduction of a (potentially large) number of gTLDs will increase the potential for cybersquatting and therefore the cost of protecting a trade mark or other name via either pre-emptive registration or dispute resolution.

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Timeline

It is anticipated by ICANN that a final policy and implementation plan will be developed by the end of the first quarter of 2009, with applications for the first round of new registrations opening in the second quarter.

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Implications for Asia

Registration of domain names expressed in non-Latin characters

For almost 10 years ICANN has been investigating the technical ability to introduce, and the general desirability of introducing, Internationalized Domain Names (IDNs) which use characters from non-Latin script (for example Chinese, Korean, Japanese or Arabic characters). Currently, domain names that include non-Latin characters in the second level domain may be registered within certain gTLDs and ccTLDs (including the .cn and .kr ccTLDs).

During its June 2008 meeting, ICANN noted that, although it is still developing a comprehensive long-term policy on the use of IDNs in ccTLDs, a working group has completed a report on the fast-tracked introduction of a limited number of non-contentious ccTLDs in non-Latin script. That report is now available to the public. The report states that for a non-Latin ccTLD to be fast-tracked, it must be, among other things:

  • in an 'official' language (the language must be a language that has a legal status in the relevant territory or that is a language of administration in that territory);
  • 'meaningful' (that is, it must be the name or part of the name of the territory or it must be a short-form description that recognisably denotes the name of the territory in the relevant language); and
  • non-contentious in the relevant territory.

While ICANN's current focus in relation to IDNs appears to be largely on this fast-track program for ccTLDs, under the GNSO's recommendations for new gTLDs it is contemplated that applicants may apply for gTLDs which utilise non-Latin script, subject to the availability of that script. Such gTLDs have recently been successfully tested.

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Protecting your IP rights in other languages

Companies interested in obtaining registration (whether of domain names or gTLDs) in other languages should ensure that they have trade marks registered in the appropriate script and country. Such registrations will allow a company to take advantage of any sunrise periods implemented by registries, as well as providing a basis for a claim in any UDRP-based dispute resolution process.

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For further information, please contact:

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