Thursday, October 30, 2008

ICANN to allow new top-level domains – warning to brand owners

The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for the allocation of all top-level domain names. There are presently only a limited number of top-level domains (e.g. .com, .net, .org etc) but ICANN has announced it intends to open the market for any person to create new top-level domains of their choosing.
ICANN has issued a draft "Applicant Guidebook" on which it is inviting comments. The draft guidebook may be seen here. ICANN is inviting comments from the public on the draft guidebook, and states that it will receive comments for 45 days (from 24 October 2008). The draft guidebook states that, during the (as yet undetermined) application period, any "established entity" from any country may apply to operate a top-level domain. The top-level domain proposed may either be an "open" domain, which is available to any type of applicant, or a "community based" domain, which must relate to an identifiable and pre-established community that has endorsed the registration of the domain. The application must show that the applicant will have a dedicated registration and use policy, and that the applicant has the operational, technical, financial and organisational capability to maintain the top-level domain proposed. The draft guidebook states that the proposed registration fee for the new top-level domain will be $185,000. Of particular interest to brand owners, the draft guidebook contains details of the proposed objection mechanism which will allow interested parties to challenge the registration of a new top-level domain. The proposed grounds of objection are:String Confusion Objection – existing operators of top-level domains can complain that a domain applied for is confusingly similar to an existing top-level domain; Legal Rights Objection – a "rightsholder" (which is not defined, but this is likely to mean a trade mark owner or someone with unregistered trade mark rights/reputation) may complain that a domain applied for infringes their rights; Morality and Public Order Objection – the parties who may complain about a domain applied for which is contrary to morality and public order are yet to be determined by ICANN, but they may be limited to Government bodies; and Community Objection – an "established institution" within a defined community may complain about a domain applied for which may be targeted at such community if a significant part of that community substantially objects to the application. The draft guidebook contains a long description of the proposed procedure to be followed if objections are raised to top-level domain applications. The procedure will involve arbitration with set rules similar to a UDRP arbitration that is operated by one of a number of providers (e.g. WIPO). The cost of the procedure is not outlined in the draft guidebook, but it is proposed that String Confusion and Legal Rights Objections should be dealt with by the arbitration provider for payment of a fixed fee, and other Objections should be dealt with for payment of an hourly rate. There is no procedure proposed to notify brand owners if a top-level domain is applied for which features a registered trade mark. As a result, brand owners will need proactively to monitor ICANN's website to see the applications that have been made. There is only a limited time period proposed in the guidebook during which objections may be made to applications. It is therefore very important that brand owners wishing to object to applications do so within the required time period. Otherwise, costly court action might be the only remedy available to brand owners after the new top-level domain is approved. Further information about the proposals may be seen on ICANN's website.

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