New gTLD Applicant Guidebook Discussion Draft Released, Open for Public Comment

April 15, 2011
Media | News | Patents

On April 15, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) posted its latest version of the guidebook for applicants for new generic top-level domain names (gTLDs)-new extensions that could include brand (“.deloitte”), community (“.arab”), generic (“.bike”) or geography (“.melbourne”). The Guidebook is a comprehensive guide for applicants describing the program’s requirements and evaluation process. Public comment on the latest draft of the Guidebook is open until May 15, 2011.

According to ICANN, changes incorporated into this version of the Guidebook are intended to address concerns with the new gTLD program raised by the Governmental Advisory Committee (GAC) in consultation with the ICANN Board of Directors. GAC provides advice to ICANN on issues of public policy and its participants include representatives of national governments.

In addition to the Guidebook, ICANN published six explanatory memoranda on various relevant issues identified as part of Board/GAC consultations, including a memorandum on trademark protections. This memorandum highlights the following enhancements in trademark protection:

  • A requirement for gTLD registries to implement sunrise services and trademark claims services, rather than offering a choice of one or the other. A “sunrise” is an exclusive registration period prior to general registration when trademark owners may register desired second-level domains within new gTLDs, thereby preventing cybersquatters from registering the domains. “Trademark claims services” provide notice to trademark owners when someone else registers a second-level domain name using the trademark.
  • Maintaining a requirement for a demonstration of a registration based on use to participate in prelaunch sunrise mechanisms (see above), Uniform Rapid Suspension System (a low-cost and rapid means for taking down infringing domain name registrations), and Post-Delegation Dispute Resolution Procedure (disputes between the trademark holder and the gTLD operator). According to the Board, requiring use is a pro-trademark approach. For example, it would prevent a third party from obtaining a trademark registration, without showing use, for the purpose of registering a second-level domain name during the sunrise period.

As of publication, there have been few comments on the latest version of the Guidebook and no comments on the aforementioned enhancements in trademark protection. ICANN plans to post a final version of the Guidebook on May 30, 2011, in time for consideration of the new gTLD implementation program at a meeting of the ICANN Board of Directors to be held on June 20, 2011, at the ICANN meeting in Singapore. Some estimate that applications for new generic top-level domain names could be accepted as soon as October, 2011. The U.S. House Subcommittee on Intellectual Property, Competition and the Internet will conduct a hearing on new gTLDs on May 4, 2011.


MWZB Newsletter Signup