Gilson LaLonde: A Call to Action About the Upcoming Surge of gTLDs

Gilson LaLonde: A Call to Action About the Upcoming Surge of gTLDs


Addressing concerns about the trademark implications of the roll-out of new top-level domains in 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) created the Implementation Recommendation Team (IRT) to make recommendations for trademark protection. The IRT’s final report makes several proposals intended to protect mark owners from the possibility of large expenditures and abusive registrations expected to result from the surge of generic top level domains (gTLDs). Comments are due July 6, 2009. In this Commentary, Anne Gilson LaLonde summarizes and reviews the IRT’s final report. She writes:
 
     The IRT Report makes recommendations in five general categories:
  • an IP Clearinghouse that would maintain a list of validated trademark rights and a list of Globally Protected Marks;
  • a Uniform Rapid Suspension System for takedown of web sites associated with abusive domain names;
  • a Post-Delegation Dispute Resolution Mechanism to stop systemic abuses of the domain name system by new gTLD registry operators;
  • a thick WHOIS requirement for new gTLD registries; and
  • the use of an algorithm to screen applications for new gTLDs.
     . . . .
 
     The operator of a new gTLD registry has a financial incentive to allow abusive registrations in its gTLD rather than rejecting such registrations and losing the associated registration fees. The IRT Report recommends a procedure by which registry operators may be sanctioned for enabling cybersquatting and where they have a bad faith intent to profit from infringing domain names.
 
     . . . .
 
     Currently, ICANN proposes the use of an algorithm to review every gTLD string that is the subject of an application. It will make a preliminary comparison of applied-for gTLD strings against existing gTLDs and other applied for gTLDs. The algorithm as currently proposed relies entirely on visual similarity of the strings. The IRT Report recommends that the initial consideration of applied-for gTLD strings be expanded to include analysis of the aural impression of the string and the commercial impression, or meaning, of the string.