Fun and Games in ICANN’s new gTLD Process

5/7/13

Most readers are probably aware that the Internet Corporation for Assigned Names and Numbers (ICANN) has recently introduced a process to open up the domain system to a myriad of new generic Top Level Domains (gTLDs). In this context “generic” may be somewhat of a misnomer, because a number of the domains applied for correspond with proprietary trademarks and brand names. Under the new system, a brand name holder can apply for its trademark or brand name as a character string “to the right of the dot.” For example, Amazon.com has applied for “.amazon” and, if its application is successful, it will be entitled to manage a new domain name registry with this TLD and to create various sub-domains within that domain space such as “books.amazon” and “author.amazon.”

Despite the hefty $186,000 price tag per application, brand name holders have not confined themselves to applications for their own brands and marks as new TLDs, but have also applied for more generic terms that may be relevant to their business models. For example, Google has applied for “.search.” Other entities have applied for generic terms for more varied purposes. An entity called Donuts has submitted the highest volume of applications for new gTLDs—307 strings in all. It seeks to contract with widely used domain name registries such as GoDaddy to run registries for second level domains within its new domain spaces. There will likely be a significant market for what Donuts can provide, if its applications are successful. For example, one of its applications is for “.university.” It is obvious how that domain space might appeal to a variety of entities involved in the provision of tertiary education.

Many new business models are possible in the new domain spaces. For example, some entities have sought to register strings comprising somewhat pejorative terms with different business models in mind, such as selling second level domains for purposes of gripesites, fan sites, parody sites, or other kinds of commentary website. The Australian government, in fact, has been a vocal objector to the applications for “.sucks,” “.gripe,” “.fail,” and “.wtf.”

Although the new domain name process has been under development for many years—and no applications have yet been granted—a number of challenges are now arising for ICANN which were foreseeable in the past, but which had not been resolved before the first round of applications was opened. To its credit, ICANN has sought public comment on a number of these issues. But it may be too late in the game for meaningful changes to be made to the system without opening ICANN up to threats of litigation or abuse of process by those who relied on the application guidelines initially promulgated by ICANN, and who expended significant resources in making their applications.

Some of the more contentious issues on which public comment has been sought include the extent to which brand owners should be entitled to run “closed” or “exclusive” registries for terms that are relevant to their business models but that do not actually correspond with their proprietary brands and marks. Google’s application for “.search” is an example. If the application is successful, Google would not necessarily want to open up the second level of the “.search” domain name to its competitors or to anyone else.

Concerns have also been raised about TLDs that may involve proprietary trademarks but simultaneously identify geographical regions, such as “.amazon” and “.patagonia.” While relevant governments have typically allowed the registration of these trademarks in their countries, a recent Government Advisory Council (GAC) Communiqué suggested that some of these names should not proceed past the initial evaluation stage by ICANN as new gTLDs. Again, ICANN has called for public comment on this issue along with other issues raised by the GAC, including the possibility of imposing significant obligations on new domain name registry operators with respect to the conduct of those operating second level domain names within their domain spaces. These obligations include monitoring and reporting functions that go well beyond those that have been imposed on registry operators of existing gTLDs.

The GAC has also requested that ICANN require closed registries in certain “generic” domain spaces to serve what is described as a “public interest goal.” The TLDs identified by the GAC for this special treatment include “.baby” (but not “.kid”), “.theater,” “.video,” and “.watches.” While the original guidelines for the new gTLD process made provision for individual governments to object to applications for specific TLDs, this new GAC approach of making ambit claims that require public interest goals for certain gTLDs is out of keeping with the spirit of the process as originally negotiated. Particularly worrisome, in the context of the latter point, is the GAC’s failure to define what would amount to a public interest goal in this context.

While many of these challenges were easily foreseeable as the new domain name process was being developed, the timing and content of their resolution will likely have a significant impact on innovation—or lack thereof—in new domain spaces. And no one should underestimate the power of Google in terms of the future use of new gTLDs. It will likely be Google’s search engine more than anything else that directs Internet users toward or away from any new gTLDs. And interestingly, Google is one of the highest volume applicants for new TLDs. The domain name system is poised to face some interesting times in terms of commerce, freedom of expression, and online innovation.

Jacqueline Lipton is the Baker Botts Professor of Law and Co-Director of the Institute for Intellectual Property and Information Law at the University of Houston Law Center. Follow @

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