David Taylor is a partner in the Intellectual Property, Media and Technology Practice of Lovells LLP where he heads up the Domain Name Law Practice.  David is also a domain name panelist with WIPO for the UDRP, the Czech Arbitration Court for .EU and the UDRP and Nominet for .UK.  He was also a member of the Implementation Recommendation Team (IRT) tasked by the ICANN Board to develop and propose appropriate solutions concerning trade mark protection in connection with the introduction of new gTLDs.

Forum carried out the below interview in order to get an insight into this subject and its importance today.

Forum: What are these new gTLDs all about?

DT: The launch of new generic top-level domains (new gTLDs) in 2010 is likely to cause an unprecedented shake up to the domain name system and the Internet.  While it is hoped that it will enhance diversity, choice, competition and innovation, it will inevitably cause a considerable burden on rights owners across the globe who will need to carefully reconsider their online strategies. 

Forum: Can you give us some background on this?

DT: Today, just over 20 years after the inception of the World Wide Web we are still in the ‘pre-dot’ era dominated by '.COM'.  However, 2010 could well see the dawn of the ‘post-dot’ era of the Internet, namely the launch of hundreds, and  in the long term perhaps thousands, of new gTLDs to join the 21 gTLDs, which include the ubiquitous ‘.COM’, as well as ‘.BIZ’, ‘.INFO’, ‘.MOBI’, and somewhat lesser known ones such as ‘.MUSEUM’ and ‘.AERO’).

ICANN, the Internet Corporation for Assigned Names and Numbers has commenced a process of expanding the domain name system by allowing and encouraging the introduction of an unlimited number of these new gTLDs. Soon, in theory, anyone will be able to apply to register almost anything as a TLD. That is to say rather than having one’s brand or name before the dot, it could appear after the dot. Instead of ‘ellen.com’ or 'david.com', for instance, I, among other interested parties, could apply for ‘.ELLEN’ or '.DAVID'.  Clearly, the competition for ‘.DAVID’ might not be too intense, but for many other TLDs we could see some rather fierce battles: ‘.BEER’, ‘.WINE’, ‘.WEB’, ‘.BANK’, as well as ‘.ORANGE’ and ‘.APPLE’ being more obvious examples where there could be competition from various interested parties and thus some significant disputes.

Forum: So this is something open to everyone – every Internet user today?

DT:  Only applications from established corporations, organisations or institutions in good standing will be considered. The process is by no means as straightforward as it is when applying for a "traditional" domain name and will require very significant financial resources. Despite these high costs, and the current tempered economic climate, it is clear that a number of communities, rights owners (and their competitors) together with domainers are gearing up to prepare to enter the post-dot era, examples include '.GREEN', '.BERLIN', '.PARIS', '.LONDON' '.SCOT' '.SPORT', '.BANK' '.FOOD' and '.SHOP'.

It is unlikely that every new gTLD will be a success.  However, the definition of success is relative, 10,000 registrations to one TLD may be sufficient, but 200,000 to another open TLD may be considered a failure. Each needs to find its own place in the Internet space. We may yet find ourselves with a bunch of toxic TLDs in the future, and the issue then may be what happens to those consumers who have registered domain names under such TLDs.

Forum: How does this fit in to the current picture of domain names today?

DT: Currently the gTLD namespace consists of 21 gTLDs (for example .COM) and 251 ccTLDs (for example .DE or .FR or .CO.UK).  Demand to register under these TLDs has been high.  In total, over 180 million domain names have been registered across the globe, and some 70 million of these are country-code TLDs (ccTLDs). Thus, it is clear that huge numbers of brand owners, individuals and domainers are doing business via the Internet. However, is there a sufficient supply of domain names or, more to the point, is there a sufficient supply of the right sort of domain names? This remains open to debate. Many argue that the opening up of the supply of TLDs would bring about more choice and diversity.  The inevitable down side is that it will also add to the complexities and costs for brand owners in their never-ending battle to protect their rights in an ever-expanding virtual arena.

Forum: When was this process set up?

DT: Perhaps the defining moment was in June 2008 at the Paris meeting of the Internet Corporation of Assigned Names and Numbers (ICANN) where the Board gave the green light for the creation of many more gTLDs.  However, the process has been ongoing for many years prior to this and we have already seen two limited rounds of new gTLDs in 2000 and 2003/2004.  What is different here is that on this occasion ICANN have announced that applications can be unlimited in number.

Forum: What are the costs involved in applying?

DT: According to ICANN, an applicant will have to pay an evaluation fee of $185,000. This is clearly significant, and one which should easily discourage spurious applications. However, it may well also discourage some potentially very worthwhile community applications, especially at a time when cash and credit for many are in short supply. ICANN argues that such a high fee is necessary for the first round of applications to recover the costs associated with the new gTLD programme. However this fee is not the only one, in addition to legal and consulting fees, additional fees may have to be paid, such as extended evaluation fees, objection fees or dispute resolution fees as well as proposed annual registry fees. Thus, the application fee itself is but a fraction of the overall costs associated with the running of a domain name registry.

Forum: We mentioned the IRT at the beginning of our interview; can you shed some light on what the IRT was all about?

DT: Having recognised that the protection of trade marks in the impending new gTLDs was one of the key issues and, given the complexity of the subject and wide variety of conflicting views, the ICANN Board concluded that the issue of trade mark protection in the new gTLD space needed to be addressed properly before applications could be allowed.  They thus sought to create a specialist team, the Implementation Recommendation Team, or IRT, which needed to be formed rapidly and be able to consider, develop and propose solutions to the overarching issue of trade mark protection in connection with the introduction of new gTLDs.  The IRT panel thus comprised a geographically and experientially diverse group of 18, consisting of trade mark lawyers from private practice, senior corporate counsel, academics as well as representatives from domain name registrars and registries.

In what many considered a ridiculously tight timetable (or at the very least an ambitious one), the team considered some 1000 pages of public comments and papers, held regular conference calls and liaised by email daily.  In addition, two face-to-face meetings were held over five days as well as one full day face-to-face consultation to hear the views of various experts in the domain name field, including WIPO which has been contributing significant trade mark-DNS policy input to the whole process, and Nominet with its own functioning fast track dispute resolution process.  Representatives from both flew across the globe to contribute their experience gleaned from years of dealing with abuse in the domain name system.  The IRT listened to what they all had to say, seeking to take on board as many valid and often diametrically opposed viewpoints as it could, learning from other TLDs, registrars and registries, then working together to try to build consensus and a workable solution.

Forum: What is the significance of the IRT report?

DT: The final report of the IRT was published on 29 May 2009. What the IRT sought to create was a "tapestry of globally-effective solutions".  What it is not is a magic carpet.  It is not perfect, and the members of the IRT are the first to recognise this.  This is not just due to the short time frame, it is due to the nature of the subject matter itself; many of the issues have not been solved in the real world after many years and one cannot expect an immediate solution in the virtual world of the Internet and the domain name system.  The short time frame has meant that some significant issues had to be left out - proxy registrations being one example, which many feel needs urgent attention from ICANN regardless of the launch of new gTLDs.  The fact that 2010 will see the Internet landscape undergo significant change makes such issues even more pressing.

Forum: What were the IRT recommendations?

DT: The key solutions recommended were:

(i) An IP Clearinghouse, Globally Protected Marks (GPM) List and associated Rights Protection Mechanisms (“RPMs”), together with standardised pre-launch rights protection mechanisms;

This would be a first step and the IP Clearinghouse would consist of an electronic database of registered trade mark rights to provide a platform for the rights protection mechanisms suggested by the IRT.  The GPMs feature would provide protection to globally well-known and protected marks at the top and second-level.

(ii) A Uniform Rapid Suspension System (“URS”);

All registries would be bound to this procedure pursuant to their contracts with ICANN.  The purpose of the URS would be to provide a cost-effective and timely mechanism for brand owners to protect their trade marks against the most clear cut cases of abuse.  The procedure would not be a substitute for the UDRP, which would remain in effect, but would rather be an additional tool within the framework of alternative ways of combating cybersquatting.  If the examiner concludes that an infringement has been established, the domain name would remain locked and deactivated at the registry.

(iii) A post-delegation dispute resolution mechanism;

This is designed to deal with eventual systemic abuses by Registry Operators, namely where there is a bad faith intent to profit from the registration of infringing domain names and this mechanism revolves around a situation in which a third party wishes to invoke the breach of a certain contractual provision by a Registry Operator. 

(iv) A thick Whois model for all new TLDs to protect consumers and brand owners;

Under a thin Whois, the publicly available information is very limited and may not reveal the identity of the registrant, forcing internet users and particularly brand owners to seek clarification of the registrant’s data from the registrar at issue.  The thick Whois ensures the central, registry-level provision of Whois information for all domain names registered within the registry.

(v) Careful consideration of the results of use of the algorithm in string confusion review during initial evaluation.

The IRT suggested expanding the analysis to include consideration of the aural and commercial impression which the string applied for brings to mind.

Forum: Are all of these solutions workable?

DT: The IRT deliberately sought to try to find a workable solution, not one that overzealous trade mark owners could perhaps use to attack new registry operators.  At the same time, we sought to avoid a solution so weak that unscrupulous registry operators could unfairly take advantage of it with the result of systemic abuse in these new gTLDs - something which can benefit no one except those seeking to profit unfairly from it.  The recommendations were not a starting point for negotiations.  The hope is of course that if new gTLDs are launched then the recommendations are a step towards technically feasible, fair and affordable solutions applicable globally to allow new gTLDs to flourish.

Forum: What is the latest on the implementation of these recommendations by ICANN?

DT: Given the speed with which things are moving, I think one will have to attend the conference!  At the time of writing, we are awaiting publication of the Third Draft Applicant Guidebook by ICANN (DAG3), and we will have to see the extent to which the IRT recommendations, together with other input from the community have been included.  There will then no doubt be further discussion from all sections of the Internet community.  We are today at a pivotal moment in shaping the Internet of the future and there exist many vociferous interest groups who do not want rigorous trade mark protection to be a feature. 

Forum: To end with what are your personal thoughts on the introduction of new gTLDs?

DT:  It is a complex subject with many different points of view.  In essence, we have to deal with the question of finding the right balance.  On the one hand, there is a perceived need for new gTLDs – though frankly I do have my doubts.  On the other, brand owners should not be put to the expense of having to defensively register their brands across hundreds of new gTLDs – defensive registrations themselves, unless used, serve no purpose.  Can existing defensive registration strategies continue with the associated spiralling costs of protection across hundreds of new TLDs?  It is a time for new strategies in the online world.

In my view, the domain name space should be used in a manner that benefits users across the globe.  Any new gTLD created should serve a purpose, a community, a clear need.  It should also have clear inbuilt mechanisms to minimize abuse, which are enforced.  I would prefer to see the introduction of new gTLDs in a more ordered fashion, in waves.  Where a new TLD has strong Rights Protection Mechanisms and a clearly identified community then it should be able to proceed.  If one looks back at the ICANN GNSO report of 11 September 2007, it clearly states that: "New generic Top Level domains must be introduced in an orderly, timely and predictable way".  There is a perception that ICANN is simply opening the floodgates – and at this stage, although much work has gone into the process, we still do not have appropriate rights protection mechanisms in place to deal with such a radical change.

One should not, of course, forget the potential opportunities this brings for brand owners who themselves may decide to move to the right of the dot and running a ‘.BRAND’.