During the final meeting of the year in Buenos Aires, the Internet Corporation for Assigned Names and Numbers (ICANN) published an update to a technical issue that had previously threatened to hold up the launch of new top-level domains (TLDs).
The so-called ‘alternative path’ to delegation report is a solution to a technical risk that outlines how newly introduced TLDs could potentially cause conflicts or issues with domain resolution and domain operation in applications such as web browsers and email programs. Based on data collated by an outside technical consultant, ICANN identified and classified more than 1,000 new TLDs into broad categories that placed more than 80% of the extensions in the program as low risk. For these low risk TLDs, ICANN has now published individual lists of second-level domains (SLDs) that must be blocked in that TLD in order for the registry to proceed to delegation and TLD launch.
These blocked lists, or reserved names in registry parlance may not be delegated or activated on the Internet by the registry for that top-level domain (TLD) for an unspecified period of time – the truth is that only ICANN can determine for how long these lists of domains must be blocked.
Reserved names are nothing new to ICANN and existing gTLD registries. Not only are existing TLDs blocked from registration in other TLDs, but there are organization names protected by international treaties that are also afforded this protection. Think global organizations such as the International Olympic Committee, the Red Cross, and other inter-governmental orgs. ICANN published a list on their website in September here.
Most people understand that these organizational names have to be blocked to prevent confusion.
However, with the block lists published by ICANN as part of their alternative path, there is some concern from brand and trademark owners that their names appear on the list. In fact, some of the largest brands in the world appear on the list – household names that any Internet user might have typed into their browser in the last several years.
Without going into the technical reason as to why these brands must be blocked in certain new gTLDs, the impact to a trademark owner is that:
a) If your brand is blocked in a TLD(s) and you want to register it in order to use it, how do you go about doing that?
b) If your brand is blocked in a TLD(s) and you are happy about that because you had no intention of registering it or using it in the first place, how long will that name be blocked?
For those brands in category A, it’s unclear right now as to whether or not those blocked names will be available to register… ever. There are exceptions to this rule: Donuts, the largest portfolio applicant registry in the new gTLD program, will allow sunrise registrations for these blocked names, will allocate the name after sunrise, but will not delegate it (i.e., activate it on the Internet). That means a trademark owner will pay the fees, may get the name, but won’t be able to use it for a website or for marketing purposes until ICANN says it’s okay. Again, a very uncertain future especially when the trademark owner is spending time and money to go through the sunrise process.
For those brands in category B, you are a lucky one indeed. If your name is blocked you may not have to spend time or money to prevent infringement of your trademark in those domains.
In both scenarios, the question is: for how long will ICANN require blocking of those names?
In either scenario, the basic considerations for brand and trademark owners in new gTLDs still apply:
- Register your marks in the trademark clearinghouse (TMCH) without delay in order to qualify for sunrise if you choose to apply during any sunrise period.
- Review registry-specific rights protection mechanisms (RPMs) such as the Donuts domain protected marks list (DPML) and contact your service provider to help you conduct a cost-benefit analysis for participating in one of these RPMs.
- Prepare for sunrise launches by reviewing the list of open gTLDs that will launch in the next two years; curate a list that are relevant to your industry and sector, and select those that are generic or present a risk (adult-oriented, negative sentiment TLDs).
- Monitor the latest developments coming from ICANN for news on how they will manage these blocked lists.
Contact your CSC Digital Brand Services representative for assistance with any of these action items listed above.