On June 13, 2012, ICANN – the Internet’s governing body – published the list of applicants for generic domain name strings under its new registration program. In this program, a party could apply to register a generic domain string and serve as the sole registry for all domain names ending in the string. For example, Apple, Inc. applied to own the string .apple and, if awarded the string, will administer all domains with .apple. The window for applications closed on May 30, 2012, but ICANN plans on holding more application rounds in the future.
ICANN launched this historic Internet expansion because of crowding on the Internet. In recent years, the number of available domain names has significantly dwindled.
ICANN took steps to ensure that history would not repeat itself with this next generation of domain names. After the Internet emerged in the 1990s cybersquatters became rampant because domain registrations were inexpensive. Cybersquatters are individuals or companies that register, traffic, or use domain names in bad faith with the intent to profit off of goodwill in a trademark owned by someone else. In the new program, ICANN priced cybersquatters out of the market with a $185,000 registration fee for control of new strings.
Many Companies Seek Control of Strings Consisting of their Well-known Marks
Owners of well-known marks across all business sectors applied for new generic domain name strings. Nearly every automobile manufacturer is seeking control of their marks with strings including .audi, .bentley, .bmw, .chevrolet, .chrysler, .dodge, .ferrari, .ford, .gmc, .honda, .jaguar, .landrover, .lexus, .lincoln, .toyota, and .volkswagon. The financial services institutions Capital One Financial Corporation, Barclays Bank PLC, and JPMorgan Chase & Co. along with the technology companies IBM and Microsoft Corporation are also claiming strings consisting of their marks in this new Internet space.
Many of these companies had to enforce their trademark rights against persistent cybersquatters. Capital One arbitrated 15 domain disputes from 2000 to 2012 against cybersquatters who registered domains incorporating the Capital One mark. During this same time period, BMW arbitrated 37 disputes against cybersquatters using the famous BMW mark. Registration of the new domain strings will not block cybersquatting with existing gTLDs (e.g., .com, .net).
Many companies are vying to control a number of descriptive strings. These applied-for strings include .app, .book, .cloud, .news, .map, .mobile, .movie, .music, .pay, .save, .search, .shop, .show, and .video. Amazon is a common applicant for these strings amongst many other applicants that are mainly domain registries. Several applicants are also seeking control of .blog, .pizza, and .wine. ICANN’s dispute resolution process will be used to determine who will own applied-for strings having more than one applicant. Top Level Domain Holdings Limited is the only applicant for .beer and .vodka and appears to have locked up these strings.
ICANN Evaluation and Approval of Strings
In July, 2012, ICANN will begin its evaluation of applied-for generic domain strings to confirm that registration requirements are met. It will also seek to resolve string confusion, which ICANN describes as synonymous with confusion between trademarks. This evaluation process will be completed in about 7 months.
Public Objection to String Registration
Any individual or company is permitted to object to registration of any applied-for string by filing a complaint with an ICANN-approved dispute resolution provider. The objection period opened on June 12, 2012 and ends in about 7 months (ICANN has not designated a closing date for filing objections). Grounds for an objection include (1) string confusion between two domain strings, (2) ownership of preexisting legal rights in a mark, (3) public interest, and (4) general community protest. Although ICANN developed an objection process, it encourages private settlement of all disputes. Final decisions on disputes will be made within 5 months after the objection period closes.
If ICANN approves a string and objections are not raised to its registration, you should expect to see domains with the new string on the Internet in 2013.
The intellectual property attorneys at Dilworth Paxson LLP have experience with domain dispute resolution proceedings and also enforcing trademark rights against cybersquatters and other infringers operating in the Internet space. If you have questions about the convergence of your rights on the Internet or in any other context, please feel free to contact the attorneys in Dilworth’s Intellectual Property Group.