ICANN publishes applications for new generic top-level domain names

Justine Whitehead and Anne MacIsaac -

On June 13, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) published a list of the 1,930 applications for new generic Top-Level Domain Names (gTLDs) it had received during its recent January to May 2012 application period. The influx of applications was due to new rules approved in June 2011 by ICANN, the body which oversees the registration and coordination of the Internet’s system of unique domain names. The rules transform naming conventions for Internet Web sites by removing restrictions on allowable suffixes for domain names. Currently, Web site domain names end in either a country code (such as .ca or .uk) or in one of only twenty-two gTLDs, such as “.com” or “.org”.  Now organizations can apply to register any character string as a gTLD. This will allow companies to register their brands as gTLDs or to select other unique domain names for marketing purposes, drastically increasing the number of available domains. Applications were received from sixty countries, including sixty-six requests to register geographic names as gTLDs, and 116 requests for strings in non-Roman characters (called Internationalized Domain Names, or IDNs), such as Chinese, Arabic, and Cyrillic.

ICANN will consider a number of factors when reviewing the applications. For example, they will evaluate whether a proposed gTLD is confusingly similar to an existing gTLD, to a reserved character string or to another proposed gTLD; whether it is a geographic name requiring government support; and whether it contributes to domain name system (DNS) instability. They will also look at whether the applicant possesses adequate technical, operational and financial resources with respect to the registry services they will be required to provide.

As part of a public review process, the public will have an opportunity to comment on proposed gTLDs during the 60 days following the June 13 posting. Interested parties will also be able to file one of several types of objections during a formal seven month objection period. Bases for objection include: “string confusion”, where the proposed string is confusingly similar to that of an existing gTLD or to another application; “limited public interest”, where an application is contrary to generally accepted legal norms of morality and public order; “community”, where there is substantial opposition among a significant proportion of the community targeted by the proposed gTLD; and “legal rights”, where rights-holders, such as owners of registered or common law trademarks, may oppose a gTLD which infringes on their legal rights. Trademark owners should review the list of proposed gTLDs to ensure that none infringe upon their trademark, and submit comments or file an objection if appropriate.

The new rules also mean that there is now a greater variety of domain name extensions which could be used in combination with trademarks in an infringing way, requiring continuing vigilance by trademark owners to protect their legal rights. To help address this concern, ICANN will operate a Trademark Clearinghouse - a centralized database where trademark owners can deposit their trademark information in order to support future infringement claims.  The Clearinghouse can also be used to support Sunrise claims, allowing mark holders to register domain names in a TLD before the name is available to the general public.  

While marketing opportunities exist for trademark owners who can afford to invest in the chance to register their marks as a new gTLDs, the resulting proliferation of new domain names will present challenges for others. To protect their marks, trademark owners should monitor applications for gTLDs, file objections when problems are identified, and register their trademarks with the Trademark Clearinghouse.

Lady Gaga and fansite caught in a bad romance

Stuart McCormack and Lindsay Gwyer -

A string of number one hits and worldwide notoriety weren’t enough to bring Lady Gaga success in a domain name dispute over the use of her stage name. Earlier this fall Lady Gaga, whose real name is Stefani Germanotta, failed to convince an arbitration panel that the domain name ladygaga.org was being used illegitimately by one of the singer’s fan sites.

Domain names are allocated through accredited registries that use a central registry system overseen by the Internet Corporation for Assigned Names and Numbers (ICANN). Disputes over domain names are resolved in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the Policy). In order for a domain name to be cancelled or ordered to be transferred under the Policy a complainant must show that: the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; the respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith.

Lady Gaga managed to successfully convince the arbitration panel that the ladygaga.org domain name was identical to the trade-mark “Lady Gaga,” in which she has rights. She relied on three registrations filed with the United States Patent and Trade-mark Office, the earliest of which were registered in October 2009, as evidence or her rights in the mark. The Panel refused to accept that she had acquired common law rights in the mark as early as September 2006, when she claimed to have first used the mark. Nonetheless, the Panel conceded that at some point she had acquired common law rights in the mark Lady Gaga, even if it could not pinpoint the exact time. It also found that that the domain name in question was identical to the trade-mark, despite the lack of space between the two words and the addition of the “.org.”

It was the second element that proved fatal to Lady Gaga’s claim. The Panel held decisively that the non-commercial fan site was a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain name. The Panel was particularly swayed by the fact that there were multiple notices on the website indicating that it was an unofficial site. Nonetheless, the driving consideration was clearly that the Respondent had no intent to profit from the website. The Panel warned that any future, profit-driven changes to the website might cause the dispute to be decided differently in future. Having found that the domain name was being used for a legitimate purpose, it was unnecessary to consider whether the Respondent had acted in bad faith.