The Internet Corporation for Assigned Names and Numbers (ICANN) released a revised Draft Applicant Guidebook relating to its plans for the expansion of gTLDs (generic top-level domains). As previously reported in our October 2008 Newsletter, the guidebook provides a draft proposal for the application process and guidelines that will attach to any public or private organization that wants to register any string of letters as a gTLD. Upon receipt of public comments from many competing constituencies, such as trademark holders, registries, registrars, and domainers, ICANN has revised the policy documents and commenced a second Public Comment period through April 13, 2009. Potential applicants for new gTLDs should review the revised Draft Guidebook at ICANN's website at www.icann.org, but the guidebook is still a work in progress. ICANN has announced that the application process for new gTLDs likely will not occur before December 2009 at the earliest.
In the revisions, ICANN proposed a significant reduction in ongoing "Registry-Level Fees," reducing the original proposed $75,000 per year fee down to $25,000 per year. The revisions also pertained to a variety of issues including: the dispute resolution policy for objections to new gTLDs; the definitions of "Community-Based gTLDs" and "Open gTLDs," which pertain to gTLDs that may be open to the public or limited to a particular company or group; refund schedules for applications that have been withdrawn at various stages of the proceedings; and, changes to string contention procedures.
Of greater importance to trademark holders is what has not been fully addressed in the revisions. Based on the comments submitted by trademark holders and the international business community in the initial commenting period, ICANN has recognized that it needs to further evaluate "overarching issues" relating to trademark protection, security and stability, malicious conduct, demand and economic analysis. As a result, ICANN has not yet updated the policy regarding these issues, and is seeking further consultation, along with recommendations from the global business community, before updating the language in the policy regarding these issues.
Another issue that may greatly affect registrants, and in particular trademark holders, is the potential for tiered pricing, or lack of caps, for registration and renewal fees for domain names. If there are no price caps for the registries for new gTLDs, it is anticipated that the existing registries, such as for .COM, .ORG, .BIZ, etc., may request equal treatment. Tiered pricing would result in more popular or "elite" domains being charged varying prices, without any caps. This development potentially could result in current domain name holders being charged exorbitant renewal fees to maintain the domain names associated with their company name and trademarks. In the current economic climate, the lack of caps could significantly constrain a company's ability to properly budget and implement an effective offensive and defensive domain name strategy.
Although the Department of Justice has requested that ICANN further evaluate the need and public interest for new gTLDs, the proposed program appears to still be moving forward. ICANN is intending to meet with the intellectual property community in the coming weeks to address specific suggestions, along with responding to other competing constituencies, such as registries and registrars. Following the comment period ending on April 13, ICANN will issue a third draft of the Applicant Guidebook, anticipated in third quarter of 2009. However, now is the time for brand owners to take the opportunity to review the revisions to the Guidebook, and continue to provide ICANN with concerns, objections, and/or proposed solutions to the policies that may impact company's valuable trademark rights.
Vol. 53, June 2010