ICANN’s Generic Top Level Domain
Name Proposal
AIPLA IP Practice in Japan Committee MidWinter Pre-Meeting
January 22-23, 2012, Las Vegas, NV
Speaker: Ron Harris
www.harrispatents.com
Top Level Domain History
 1984 .com, .net, .org, .edu, .gov, .mil
 1998 ICANN was created to manage domain names
 2000-2004 .aero, .biz, .coop, .info, .museum, .name, .pro.
 2003 (non-ASCII) secondary domains allowed (for .jp)
 2005-2011 .asia, .cat, .jobs, .mobi, .tel, .travel, .xxx
 2010 internationalized country codes (IDN ccTLD)
 Jan. 12, 2012 applications* for .[anything!]
 * use of first ones by 2013
2
© AIPLA 2012
ICANN Board Vote to Expand gTLDs
 June 20, 2011 voted to end most restrictions on the generic top-
level domain names (gTLD) from the 22 currently available.
 Companies and organizations will be able to choose essentially
arbitrary top level Internet domains.
 The use of non-Latin characters (such as Cyrillic, Arabic, Chinese,
etc.) will be allowed in these new gTLDs.
 ICANN began accepting applications for new gTLDs on January
12, 2012.
3
© AIPLA 2012
ICANN’s Expectations





4
The initial price to apply for a new gTLD will be $185,000 (subject to bidding
by multiple applicants), with an annual fee of $25,000 (plus staff and
computers to run associated registry) for a 10-yr minimum.
$47,000 for Applicant Support Program selectees, which includes developing
country applicants and some TM owners (???)
Limited to about 1000 new gTLD per year
ICANN expects that the first batch of new gTLDs will be operational at the
beginning of 2013.
“We have provided a platform for the next generation of creativity and
inspiration. Unless there is a good reason to restrain it, innovation should be
allowed to run free.”
© AIPLA 2012
Industry Expectations
 ICANN's rules require a gTLD registrant to protect trademark and other
rights, provide monthly reports to ICANN, host Whois services, comply
with hardware and other technical requirements, and provide a threeyear financial/business plan that establishes that funds to run registry
will be available.
 Entertainment and financial services brands are most likely to apply for
new gTLDs for their brands.
 Industry analysts predicted 500–1000 new gTLDs, mostly reflecting
names of companies and products, but also cities and generic names like
.bank and .sport.
5
© AIPLA 2012
Opposition to “Dot Anything”
 Following the vote to expand gTLDs, many trade associations and large
companies, led by the Association of National Advertisers, formed the
Coalition for Responsible Internet Domain Oversight.
 Opposes the expansion of gTLDs, citing “its deeply flawed justification,
excessive cost and harm to brand owners.”
 AIPLA: “prices unconstrained by ICANN…legal expenses and domain
acquisition costs of defensive registrations and IP claims will not be
offset by potential economic or informational value to either registrants
or Internet users.” - David Hill
 IPO also opposes
6
© AIPLA 2012
Opposition to “Dot Anything” (2)
 December 9, 2011 statement to US Congress, National Restaurant
Association vice president Scott DeFife stated, "Even beyond the
financial toll the gTLD program will exact on millions of U.S.
businesses, the Association believes that ICANN’s program will confuse
consumers by spreading Internet searches across hundreds or even
thousands of new top-level domains."
 Esther Dyson, the founding chairperson of ICANN, who wrote that the
expansion "will create jobs [for lawyers, marketers and others] but little
extra value.”
7
© AIPLA 2012
Tracking/opposing new gTLDs
 April 27, 2012, ICANN will publish all of the gTLD applications
after which third parties will have a seven-months to file
objections.
 Several unofficial lists have been established which track new
gTLD applications, such as .Nxt, New TLDs.tv, Valideus and
Registries.tel.
 Four separate and distinct grounds for objection, namely, "legal
rights"; "string confusion" (the gTLD is confusingly similar to
another proposed gTLD); morality and public order objections;
and objections based on the interests of a particular community.
8
© AIPLA 2012
Tracking/opposing new gTLDs (2)
 A legal rights objection can be raised by applicants and non-applicants alike,
and must be based on a claim to valid rights in the string of characters that
comprise the gTLD.
 "Legal rights" extend beyond trademark rights, but ICANN's definition
makes evident that protecting trademark rights is its primary concern.
Neutral ICANN panel will determine whether the applied-for gTLD takes
advantage of the objector's trademark or reputation, impairs the
distinctiveness of the objector's trademark (akin to a dilution claim under
U.S. law) or otherwise creates a likelihood of confusion.
 "String" confusion, on the other hand, can be raised only by another gTLD
applicant/registrant, and only certain defined entities or communities may
assert the public order/community objections.
9
© AIPLA 2012
Tracking/opposing new gTLDs (3)
Uniform Rapid Suspension System - Suspend use of a “dot anything” domain
(such as Nike preventing another’s registration of “.nike”)
 Register your brand(s) for preferential rights to be registered as a secondary
domain (such as “coke” in “coke.cola” if “.cola” is approved) [Clients ought to
assign staff to look out for registration of relevant gTLDs like “.cola”, “.drink”,
“.forsale”, etc. and then add their marks to this Trademark Clearinghouse to
have chance (1) to so register during a “Sunrise Period” before it is available to
others and (2) use Trademark Claims service to be notified if another registers
within 1st 60 days of availability.
 Arbitrate to change ownership (via old URDP procedure)

10
© AIPLA 2012
Cost-Benefit Analysis
 $200,000-$2,000,000 + operating expenses in, e.g., India (Bangalore),
China (Dalian), or Nigeria(!) is a significant financial risk to advertise
infringing items for two years.
 “Redelegation" of a non-exclusive gTLD gives ICANN the right to
transfer to a successor the gTLD and its registry - at ICANN’s sole
discretion and despite a brand owner's objection.
 Reduced costs for registries in developing countries?
 Role/Funding of Emergency Back-End Registry Operators in case of
registry operation failure?
11
© AIPLA 2012
Possible Steps
 Key will be to watch out for new generic top level domains related to
your products/services and register these brands accordingly in the
Trademark Clearinghouse for each of these gTLDs to gain preference
 Update Anticybersquating Protection Act (ACPA)
 ICANN details at http://newgtlds.icann.org/
• IRT conclusions http://www.icann.org/en/topics/new-gtlds/irt-final-
report-trademark-protection-29may09-en.pdf
• 349-page applicant guidebook http://newgtlds.icann.org/en/applicants/agb
12
© AIPLA 2012
Thank you.
Questions or Comments:
Ron C. Harris, Jr.
The Harris Firm - IP Counseling, Prosecution & Litigation
922 N STREET, NW, SUITE 101
WASHINGTON, DC • 20001
PHONE: 202-470-0126 • FAX: 202-478-2725
E-MAIL: [email protected]
WEBSITE: WWW.HARRISPATENTS.COM
Disclaimer: This presentation is not intended to be a source of legal advice for any purpose. Neither receipt of information presented hereby,
nor any email or other electronic communication sent to The Harris Firm or its lawyer(s) in response to this presentation will create an attorneyclient relationship. No user of this presentation should act or refrain from acting on the basis of information included in this presentation without
seeking legal advice of counsel in the relevant jurisdiction. The Harris Firm expressly disclaims all liability in respect of actions taken or not
taken based on any contents of this presentation.
13
© AIPLA 2012