September 2016 – gTLD Sunrise Periods Now Open

gTLD Sunrise PeriodsAs first reported in December 2013, the first new generic top-level domains (gTLDs, the group of letters after the “dot” in a domain name) have launched their “Sunrise” registration periods. As of August 31, 2016 ICANN lists gTLD Sunrise periods open for the following new gTLDs:

gTLDs
.shopping
.games
.kerryhotels
.able
.quest
.xn-w4r85el8fhu5dnra
.doctor
.blog

ICANN maintains an up-to-date list of all open Sunrise periods here. This list also provides the closing date of the Sunrise period.  We will endeavor to provide information regarding new gTLD launches via this monthly newsletter, but please refer to the list on ICANN’s website for the most up-to-date information – as the list of approved/launched domains can change daily.

Because new gTLD options will be coming on the market over the next year, brand owners should review the list of new gTLDs (a full list can be found here) to identify those that are of interest.

gTLD Sunrise Periods Now Open: April 2016

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the “dot” in a domain name) have launched their “Sunrise” registration periods.  Please contact us or see our December 2013 newsletter for information as to what the Sunrise Period is, and how to become eligible to register a domain name under one of the new gTLDs during this period.

As of April 29, 2016, ICANN lists Sunrise periods as open for the following new gTLDs:

.homes .vip
.auto .salon
.group .store
.gmbh .ltd
.promo .tube
.stream .med
.try .redumbrella
.travelersinsurance .stcgroup
.viva .stc

ICANN maintains an up-to-date list of all open Sunrise periods here. This list also provides the closing date of the Sunrise period.  We will endeavor to provide information regarding new gTLD launches via this monthly newsletter, but please refer to the list on ICANN’s website for the most up-to-date information – as the list of approved/launched domains can change daily.

Because new gTLD options will be coming on the market over the next year, brand owners should review the list of new gTLDs (a full list can be found here) to identify those that are of interest.

© 2016 Sterne Kessler

New Internet Domain Names for Banks: What You Need to Know Now

The world of the Internet is in a state of change. In 2008, the Internet Corporation for Assigned Names and Numbers (ICANN), the administrator of the Domain Name System, approved a new program that enables the creation of an unlimited number of new generic Top-Level Domains (gTLDs). In response, a coalition of banks, insurance companies and financial services associations partnered to establish fTLD Registry Services, LLC (fTLD) in order to apply for and operate the .BANK gTLD on behalf of the global banking community. On September 25, 2014, fTLD was granted the right to operate .BANK as a new gTLD.

The .BANK gTLDs will open up much-needed real estate on the Internet, providing new marketing, branding and cross-selling opportunities for the banking community. Eligible institutions will be able to obtain domain name registrations with a .BANK suffix instead of .COM. In addition, fTLD will implement enhanced control systems to mitigate cyber risks from malicious activities over the Internet. For example, registrants will be required to include charter verification by the registrant’s regulator before they can register a domain name in the .BANK gTLD.

The registration system for the .BANK gTLD became available mid-May 2015 for banks with registered trademarks with ICANN’s Trademark Clearing House (TMCH). The figure below illustrates the timeline for obtaining .BANK gTLDs.

domain name for banks

Domains will be awarded on a first-come, first-served basis in all registration periods. The Qualified Launch Program for Founders period was available for founding members of fTLD that have registered their trademarks in ICANN’s TMCH. The Sunrise period will be available for eligible members of the global banking community that have registered their trademark with ICANN’s TMCH. During the 30-day Sunrise period, banks that meet fTLD’s eligibility requirements will have an advance opportunity, before names are available to other eligible members of the banking community, to register domain names that are exact matches to their registered trademarks. The Founders period will be available to the founding members of fTLD that have yet to register their domains. Eligible members of the global banking community that do not meet the Sunrise or Founders requirements can then register their trademarks, on an ongoing basis, during the General Availability period starting June 24, 2015.

The .BANK gTLD provides new opportunities for marketing, branding and other promotional activities. However, once the Sunrise and Founders periods expire, domain names will be granted on a first-come, first-served basis. Institutions, therefore, should review their current marketing plan to determine if and when registration of the newly available .BANK domain names is appropriate.

© 2015 Vedder Price

ICANN’s gTLD Program – A Look Back and Forward

Sterne Kessler Goldstein Fox

ICANN’s new Generic Top-Level Domain (gTLD) program has been in full swing for over a year now, so it seems an apt time to examine some statistics as to how brands are engaging with new gTLDs, utilizing the Trademark Clearinghouse (TMCH), and which new gTLDs may give .com a run for its money.

gTLD Registration

While ICANN is expecting more than 1,300 gTLDs to go live in the following years, for the moment only slightly more than 400 are available. Despite the relatively slow roll-out of new top level domains (the characters following the ‘.’ in a domain name), the total number of registrations within these new domains has exceed the one million mark.

To date, the top five strings sitting atop the gTLD registrations list are: .xyz, .club, .guru, .berlin, and .photography. The most popular new string .xyz, which is marketing itself as an alternative to the crowded .com registry, has amassed nearly 525,000 registrations alone.

Interest and Adoption by Top Brands

World Trademark Review (WTR) recently explored the .xyz domain registration of the 50 most valuable brands and found that 80% had either registered or blocked their brand in this space. WTR’s review also found evidence of prevalent cybersquatting; for example, a single individual currently owns the domains names “americanexpress,” “honda,” and “homedepot” in the .xyz space.

In general, the levels of brand adoption and interaction with the gTLD program overall remains inconsistent, with some brands significantly more pro-active than others in their fields. Even when it comes to the Trademark Clearinghouse (TMCH), companies traditionally known for brand protection, including RedBull, Nintendo, and Blackberry, have evidently decided not to register their marks with this rights protection database

Trademark Clearinghouse

The TMCH is ICANN’s centralized database of registered trademarks related to the new gTLD program. According to the most recent figures released by the TMCH, nearly 33,000 marks from 103 countries and covering 119 jurisdictions have been submitted. These marks represent protection for over 11,000 brands and businesses worldwide. Of the marks submitted, 87% have been registered by a trademark agent, approximately 50% for multiple years, and nearly 98% have been verified. The TMCH will still be accepting mark submissions and renewals indefinitely, and approximately 7,000 marks have been submitted since the beginning of the year. On November 5 of this year, the first group of TMCH registrations will be up for renewal.

The TMCH is also tasked with delivering Claims Notices to those attempting to register a domain name matching a trademarked term. In March the Clearinghouse revealed that in excess of 500,000 Claims Notices had been issued, and 95% of the infringing domain registrations were no longer being pursued. The TMCH hailed the number of delivered Claims Notices as an indication of a “high level of interest in trademarked terms from third parties,” and proof that “protection mechanisms are working.”

But, while these findings appear to suggest the success of defensive mechanisms, there are at least two alternative interpretations of the data that likely influence these numbers. First, many of the infringing domain registrations were likely the product of data-mining and unlikely to have been pursued regardless. The second is that the sheer number of Claims Notices being issued may be keeping individuals with valid applications on the sidelines. Regardless of the reasoning behind the Claims Notices, they are at least evidence of the popularity and interest surrounding the new gTLD program.

gTLD Round Two?

As the first expanded gTLD round rollout progresses towards conclusion, ICANN has begun planning the second round. The organization has stated publically that the next round is expected in 2016 at the earliest,” but experts believe 2017 is a more realistic time frame.

In preparation for the second round of gTLDs ICANN has published a Draft Work Plan. The 27 page document details several sets of reviews and activities scheduled to guide consideration for the second round of applications. The plan addressed program implementation reviews, root stability, rights protection, the GNSO, and competition, consumer trust, and choice reviews.

As the gTLD space continues to expand indefinitely, brands will have to continue to monitor and reassess how to navigate this dynamic landscape.

Five Key Takeaways From ICANN 50 in London

Katten Muchin Law Firm

The 50th Meeting of the Internet Corporation for Assigned Names and Numbers (ICANN) took place in London from June 22–26. This marked the first time that an ICANN meeting has been held in London, and also resulted in the largest attendance record for an ICANN meeting, with more than 3,300 individuals registered in attendance. Despite what could be characterized as organized chaos on the ground during the meeting, the following five topics and takeaways began to emerge for brand owners and new generic top-level domain (gTLD) applicants—topics which have only continued to blossom and garner further attention in month following the formal conclusion of the meeting.

1. Geographic Terms Trump Trademarks, According to the Argentina Proposal

In essence, the Argentina proposal seeks to block at all levels of the domain name system, “terms with national, cultural, geographic and religious significance,”; including “regions of countries, regions of continents, sub-regions of countries, rivers [and] mountains, among others …”; subject to registration through relevant national approval. The proposal adopts a highly aggressive posture toward inevitable conflicts between natural, cultural, geographic and religious terms on the one hand and trademarks on the other hand, no doubt in response to ongoing disputes within ICANN over the .AMAZON and .PATAGONIA new gTLD applications.

Contrary to the principle of freedom of use of geographic names, allowing private companies to register geographic names as part of gTLDs [sic] strings creates a high risk for these names to be captured by companies that want to use them to reinforce their brand strategy or profit from the meaning of these names, limiting the possibility of utilizing them in the public interest of the affected communities.

See GAC Meeting: Briefing to ICANN Community – Protection of Geographic Names in gTLDs (June 25, 2014).

Although the national, cultural, geographic and religious terms contemplated are clearly distinct from geographical indications, such as BORDEAUX, FETA or DARJEELING, the two have been conflated and the Argentina proposal has raised similar ire from nations vehemently opposing the .WINE and .VIN new gTLD applications within the Governmental Advisory Committee (GAC). Accordingly, based on serious concerns within the GAC that the Argentina proposal is not rooted in international legal norms, that it hinges upon impractical and ad hoc terminology lists, and that it fails to grasp the purpose or intent of exclusivity pursuant to national trademark legislation, the GAC agreed to take this discussion out from behind closed doors and into a more public forum, via a GAC project team.

Accordingly, it is incumbent upon all stakeholders to question and ultimately oppose the Argentina proposal by weighing in on project team deliberations leading up to ICANN 51 in Los Angeles in October. Indeed, ever-expanding blocks will certainly hamper registry growth and harm contracted parties. Most importantly, myriad companies, and even third-party legitimate users, may ultimately find their famous brands and desired strings wholly excluded from the domain name system.

2. Conflicts Addressed Between Trademark Sunrise Protection and the Domain Name Collision Mitigation Framework

To date, ICANN’s domain name collision mitigation framework has failed to explicitly account for mandatory rights protection mechanisms, such as trademark sunrise and claims periods. Thus, many famous brands experienced frustration leading up to the London meeting, particularly because certain registry operators felt disinclined to allocate names corresponding with famous trademarks during sunrise periods, and instead held them as reserved names on collision block lists—a practice technically permitted within the name collision mitigation framework and Registry Agreement.

In the closing moments of the London meeting, ICANN shocked both the trademark and registry communities when it announced that ICANN would not require collision block list names to be allocated during sunrise periods, and if collision block list names were ever released for registration down the road, then only a 90-day claims period would apply, rather than any sunrise period. Both brand owners and registry operators disagreed with this announcement. Specifically, sunrise allocation stands as the clear preference for brand owners, given the choice between sunrise protection and mere claims notifications. In addition, registry and registrar systems would require substantial and costly retooling in order to ensure adequate claims notices are delivered to registrants beyond original claims periods.

Accordingly, in the wake of ICANN 50, the Registry Stakeholder Group (RySG), Intellectual Property Constituency (IPC) and Business Constituency (BC) all coalesced around a compromise counter proposal, based on the novel set of circumstances created by name collisions and mitigation measures. The compromise proposal prescribed a 30-day period for collision block list names to serve as the functional equivalent to the trademark sunrise period. In addition, the compromise proposal removed the additional 90-day claims period for collision block list names. See Application of Rights Protection Mechanism to Name Collision Block Lists(July 17, 2014). The New gTLD Program Committee (NGPC) within the ICANN Board of Directors stands poised to approve the domain name collision mitigation framework accounting for the compromise counter proposal.

3. The Circumvention of Rights Protection Mechanisms Has Reached a Boiling Point

ICANN leadership has increasingly emphasized its need for specific details in response to complaints from commercial stakeholders regarding the circumvention of intellectual property rights protection mechanisms in new gTLDs. In response, the Business Constituency and the International Trademark Association (INTA) continue to gather specific evidence, screen grabs and industry news coverage expanding upon the ways in which certain registry operators and registrars have skirted the letter and spirit of new gTLD rights protection mechanisms. Some overarching categories of abuse examined to date include inter alia:

  • preregistration offers or allocation of domain names prior to trademark sunrise and devoid claims notifications;
  • extortionate premium names programs or sunrise registration pricing covering famous trademarks;
  • incorrect claims notices integrated with advertisements; and
  • bulk premium name warehousing with registry affiliates.

Indeed, industry news coverage has already flagged a number of these practices in the public arena. See e.g., Domain Incite, GoDaddy Risking Oscars Wrath With .BUZZ Premium Domains (March 7, 2014); Domain Incite, ICANN Smacks New gTLDs For Pre-Sunrise Auctions (June 18, 2014). The goal for commercial stakeholders and INTA will be to educate ICANN on the abusive practices brand owners are encountering in the marketplace, and also demand remedial action, despite the laisse faire approach to pricing taken by ICANN in the past, and also in dealings with mere applicants who have not yet executed a Registry Agreement.

4. Improvements  for a Second Application Round Are Already Under Formation and Consideration

While in London, the Generic Names Supporting Organization (GNSO) Council unanimously passed a motion that: created a discussion group to exchange experiences gained in the 2012 new gTLD application round and identify topics for further study and policy development; solicited subject matter input from the ICANN Board of Directors; and requested a timetable from ICANN staff for the next application round, as well as a status report on pending studies evaluating the 2012 new gTLD application round. Concurrently, the New TLD Applicant Group (NTAG) held a public session in London dedicated to new gTLD program lessons and potential improvements. Commentators generally agreed on the necessity for “a defined and predictable process across the board that works for all applicant categories.”; More pointedly, intellectual property representatives advocated:

  • regulations governing premium names programs and trademark sunrise periods;
  • completely redrafted objection procedures, with the exception of the legal rights objections;
  • affirmations requiring that all domain names be subject to trademark sunrise periods; and
  • protected marks lists, similar to Donuts’ DPML model but less expensive, across all new gTLDs.

Brand owners, prospective applicants in the second round, as well as prospective objectors, are all well-advised to participate in this ongoing discussion, which will no doubt contribute to share guidelines for future new gTLD delegations.

5. ICANN Accountability Has Taken Center Stage in the Internet Assigned Numbers Authority (IANA) Transition

Community discussions to date concerning the IANA transition have concerned the process to transition IANA stewardship, and now increasingly, enhancing accountability to the community. The accountability concerned addresses the absence of the historical contractual relationship between ICANN and the US Department of Commerce (DOC)—more specifically, the theoretical possibility that the DOC could terminate its IANA contract with ICANN to renegotiate terms or engage some other qualified entity. As it stands, accountability generally already exists within ICANN in a multifaceted way, including inter alia:

  • overarching accountability and transparency commitments in the bylaws;
  • well-documented relationships with contracted parties;
  • periodic structural and effectiveness reviews mandated by the Affirmation of Commitments;
  • bylaws-mandated accountability mechanisms, namely the Ombudsman, Reconsideration Requests, and Independent Review Panels;
  • operational information on finances, metrics and performance;
  • rigorous selection processes for ICANN Board members;
  • publication of board resolutions, minutes, and statements of interest; and
  • United States rule of law as a Californian not-for-profit corporation.

In addition to exchanging ideas about improving upon this existing accountability framework, the community in London debated philosophical considerations behind accountability itself. From the debate, one message has been made loud and clear, as recently reaffirmed by U.S. National Telecommunications and Information Administration (NTIA) Assistant Secretary Lawrence E. Strickling, the “important accountability issue will and should be addressed before any transition takes place.”; See U.S. NTIA, Keynote Address By Assistant Secretary Strickling At the American Enterprise Institute (July 22, 2014). In other words, to place the matter in perspective, the IANA transition presents a unique opportunity with unprecedented pressure on ICANN to ensure its accountability framework and mechanisms work for the community—that they are cost effective, expeditious and efficient, while according due process to parties negatively affected by the actions or inactions made by ICANN.

Registering Your Trademark with the Trademark Clearinghouse – Is Your House in Order?

Dickinson Wright Logo

 

“It’s happening – the biggest change to the Internet since its inception” is how the president of ICANN’s Generic Domains Division has described the new gTLD Program being implemented by The Internet Corporation for Assigned Names and Numbers (ICANN), and rightfully so. The new program will result in the expansion of available generic Top-Level Domains (gTLDs), such as .COM, .NET or .ORG, from the list of 22 that we’ve all become familiar with through the years, to a list of possibly 1,400 generic Top-Level Domains.

On October 23, 2013, the first new gTLDs were “delegated”. This means they were introduced into the Internet’s “Root Zone”, the central authoritative database for the Internet. As a result, the domain name Registries, the organizations approved to operate these and other soon-to-be-delegated gTLDs, can execute the final processes required to make their domain names available to Internet users. ICANN claims that the purpose of this unprecedented expansion of domain name extensions is to enhance competition, innovation and choice in the Domain Name space, providing a wider variety of organizations, communities and brands new ways to communicate with their audiences. As available real estate in the “.com” territory has become increasingly scarce, it is hoped that the new gTLDs will provide additional space for entities and individuals to set up an online presence. While it is true that virtually every two or three letter combination seems to have already been registered in the “.com” Top-Level Domain, this explosion of new generic top-level domains also means big bucks for domain name registrars and additional costs for trademark owners who properly protect their marks.

While 4 new gTLDs were delegated in October, the delegation has been a rolling process, with new generic Top-Level Domains being released in November, December and January. Below are just a few of some the gTLDs that have successfully completed the process. The list will continue to be expanded as the measured rollout of the new gTLDs progresses over the coming years:

.equipment

.kitchen

.diamonds

.bike

.shoes

.technology

.enterprises

.gallery

.education

.graphics

.ceo

.ventures

As the new gTLD program is rolled out, many trademark owners are wisely looking for ways to protect their brands from being registered by third parties as domain names in the new gTLD space without their knowledge or consent. In view of the rapidly changing gTLD landscape, owners need to be aware of how to protect their marks, sooner rather than later.

What Does All This Mean for Brand Owners?

Over the past year, there has been significant discussion and concern in the legal community regarding the potential for trademark infringement by third parties seeking to register domain names that incorporate the brands of others under these newly released gTLDs.

In light of the potential for infringement, ICANN has established certain mechanisms for the new gTLD program in order to try and protect the rights of brand owners. The main tool for doing so is the Trademark Clearinghouse (TMCH), an entity created by ICANN with which trademark owners can register their marks in advance of the new gTLD launches.

Brand owners who register their trademarks with the TMCH can take advantage of a priority, or “sunrise”, period during which they are entitled to register domain names that are identical to their marks, before registration opens to the general public. In addition, the TMCH provides the brand owner with automatic notification of any third-party attempts to register domain names that are identical to their marks, enabling the mark owner to then take appropriate legal action. To be clear, this mechanism does not stop third-parties from registering domain names identical to marks registered with the TMCH, but does notify the brand owner, or its representative, of such registration. These devices provide brand owners with help against cyber squatters seeking to register infringing domain names under the new gTLDs.

Registration of a trademark with the TMCH is available for registered trademarks, marks protected by statute or treaty, or court-validated marks. Registration is also available for any other marks protectable under the new gTLD registry’s policies and that meet the eligibility requirements of the TMCH. Registration with the TMCH is encouraged for brand owners in order to combat infringement of their brands in cyberspace and registration costs currently are $150 per mark for a one-year term of registration, $435 for a three-year term, and $725 for a five-year term. Such registration with the TMCH does not include fees that will be charged by the new gTLD registrars to register domain names during the “sunrise” or general public registration periods.

The biggest change to the Internet since its inception is happening now…make sure your marks are protected!

Article by:

Nicole M. Meyer

Of:

Dickinson Wright PLLC

Are You Ready for the Coming Explosion of Cybersquatting?

Dickinson Wright Logo

 

The next wave of domain-name barbarians is gathering outside the gates. Here’s what you need to do now to keep your trademarks, and your e-commerce, safe.

Almost every business has had to deal with cybersquatters – pirates that launch web sites designed to divert customers by using domain names that mimic the business’s trademarks.

Until now, the war has focused primarily on domain names within the “.com” sphere. But the battlefront is about to expand – dramatically.

The international body that runs the Internet (called ICANN) has recently begun releasing new generic top-level domains (“gTLDs”). In addition to the familiar “.com,” this program makes it possible to set up a business name, a trademark, a geographic designation – virtually any word in any language – as a gTLD in its own right. Almost 2,000 applications for gTLDs were filed, and more than 1,000 will ultimately be granted. Because many of the new gTLDs will sell domain names to all comers without any attention to whether they are violative of someone else’s trademark rights, they will create a giant new arena in which domain name pirates can operate.

So what should you do now to protect your brands and your domain names?

1. Lock up the family jewels.

ICANN has mandated the creation of a Trade Mark Clearing House, in which owners can list their registered trademarks. It has also required that all newly-released gTLDs offer a 30-day “Sunrise” period in which owners of marks listed in the TMCH get first crack at registering them as domain names. In addition, during the Sunrise period and for sixty days thereafter, other parties that apply for those marks will be advised of the TMCH listing and, if they pursue their application, the owners of the TMCH-listed marks will be notified, giving them an opportunity to invoke various dispute-resolution procedures.

The Trademark Clearance House is now in operation, and it makes sense for brand owners to list at least their “core” trademarks there. These are the marks in which you have invested the most time, energy, and money; the ones most closely associated with your business; the ones you have already had to protect most often in the .com realm.

2. Plan now to make preemptive registrations in gTLDs of particular interest.

An important limitation of the Trade Mark Clearing House is that it protects only against domain names that are identical to your registered trademarks, not to common misspellings, typos, and so on. This leads to a second important step: being prepared to file preemptive domain name registrations for common variations of your brand.

Now is the time to identify specific gTLDs in which you will be especially interested in and to watch for their release dates. For instance, if you’re in the auto industry you will likely want to be active in such gTLDs as “.auto,” “.car,” and the like. As soon as the Sunrise period for one of your identified gTLDs opens, be ready to file immediately. This is an instance where the best defense is a vigorous offense.

Many brand owners were caught unawares years ago when the Internet burst upon the scene, and control of brand-related domain names became crucial. There’s no way to stop the next wave of cyberpiracy. But there’s also no reason not to be prepared for it.

Article by:

John C. Blattner

Of:

Dickinson Wright PLLC