The Expanding Domain Space

1
The Expanding Domain Space

• Letting a 1000 Flowers Bloom
• or
• The End of the World as We Know It?

2
Speakers

• Nick Wood, Com Laude, Moderator
• Kristina Rosette, Covington Burling LLP
• J. Scott Evans, Yahoo! Inc.
• Bart Lieben, Laga
• Jeffrey J. Neuman, NeuStar, Inc.

3
Whats the Scoop?

• ICANN Board adopted at its June 26 meeting policy
  recommendations on introduction of new gTLDs that
  GNSO Council approved in September 2007.
• Directed ICANN staff to complete the plan for
  implementing the policy recommendations.
• Absence of final implementation plan means that
  many key questions cannot be answered.

Source Covington Burling LLP
4
Why Plan Now?

• First-come, first-served processing means that
  most desirable gTLDs will be taken in first
  round.
• Subsequent rounds likely to be delayed.
• Limited number of back-end registry services
  providers with limited capacity.

Source Covington Burling LLP
5
The Good, the Bad the Ugly

• Opportunities
• Commercial platform (Web 3.0 ?)
• Brand expansion
• Authentication/security
• New advertising models
• Challenges
• Potential explosion in cybersquatting, phishing,
  and online fraud
• Rethink advertising models

Source Covington Burling LLP
6
When do the Flood Gates Open?

• Draft application expected to be posted for
  public comment in fourth quarter 2008.
• Applications likely to be accepted late first
  quarter or early second quarter 2009.
• Applications accepted in rounds of 30 days or
  longer. First-come first-served processing
  within each round. Details about each
  application published at end of each round.
• First new gTLDs expected to be added to root in
  late 2009.

Source Covington Burling LLP
7
What Are the Application Fees?

• Application fees on cost-recovery basis because
  new gTLD process expected to be self-funding.
• Application fees may differ for applicants.
• Application fee amount?
• Speculation rampant.
• Community estimates range from USD 100,000 to
  1,000,000 per applied-for gTLD.

Source Covington Burling LLP
8
How Many?

• No predetermined limit on the number of new TLDs.
  
• Estimates range from 50-1000.
• Aware of at least 50 expected applications.

Source Covington Burling LLP
9
Application Process has Assumption of Approval
for Qualified Applicants

• Evaluation process presumes that applications for
  new gTLD strings submitted by technically,
  financially, and organizationally qualified
  applicants will be approved unless
• Competing applications for same string and/or
• Third party asserts successful objection.
• Dramatic paradigm shift from the 2000 proof of
  concept and 2004 sponsored TLD rounds in which
  applicant had burden of demonstrating value of
  its applied-for string and its suitability to
  operate registry for string.

Source Covington Burling LLP
10
Overview of Evaluation Process
Source ICANN
11
Fastest Path for Application
Source ICANN
12
What Happens to Competing Applications?

• Comparative evaluation or auctions for string
  contention.
• Initial opportunity for multiple qualified
  applicants to negotiate resolution/award.
• Comparative evaluation will occur if at least one
  application claims to be community based.
• ICANN staff have indicated support for using
  auctions to resolve string contention for
  non-community based applications.

Source Covington Burling LLP
13
3rd Party Objections - General

• Policy recommendations contain four-string
  related prohibitions, each of which is ground for
  third parties with standing to assert objection
  to application.
• Defined objection period.
• Standing requirements not set may be tied to
  payment of fee.
• Objections will be resolved in dispute resolution
  proceedings administered by independent
  providers.
• Each provider will administer one category of
  objection
• Agreements with DRPs not yet finalized

Source Covington Burling LLP
14
3rd Party Objections Cat. I

• String must not be confusingly similar to
  existing TLD or Reserved Name
• ICANN commissioned development of algorithm to
  calculate potential similarity in initial
  evaluation stage
• Examples
• C0M vs. COM 88
• BZ vs. BIZ 29
• If the algorithm similarity score is above the
  pre-determined threshold, an examination panel of
  outside experts will assess the string. The
  panel will deny an application if it determines
  the string is confusingly similar to an existing
  TLD or a Reserved Name.

Source Covington Burling LLP
15
3rd Party Objections Cat. II

• Strings must not infringe the existing legal
  rights of others that are recognized or
  enforceable under generally accepted and
  internationally recognized principles of law.
• Policy recommendations referenced rights defined
  in the Paris Convention for the Protection of
  Industry Property, the Universal Declaration of
  Human Rights, and the International Covenant on
  Civil and Political Rights. 
• ICANN staff expects scope to be narrowed to
  trademarks because other types of infringement
  not workable on global scale.
• expect to apply factors similar to likelihood of
  confusion factors.
• Domainers reportedly seeking trademark
  registrations of likely strings.
• Will need to monitor publication of new gTLD
  applications.

Source Covington Burling LLP
16
3rd Party Objections Cat. III

• Strings must not be contrary to generally
  accepted legal norms relating to morality and
  public order that are recognized under
  international principles of law.
• Policy recommendations reference a number of UN
  Declarations and international treaties
• Difficulty identifying where to draw the line on
  narrow exceptions
• incitement to violent lawless action?
• incitement to or promotion of discrimination,
  child pornography, sexual abuse of children, or
  slavery?
• Blasphemy?

Source Covington Burling LLP
17
3rd Party Objections Cat. IV

• An application will be rejected if an expert
  panel determines that there is substantial
  opposition to it from a significant portion of
  the community to which the string may be
  explicitly or implicitly targeted.
• Examples cited during policy development included
  .navajo by entity other than Navajo Nation or
  authorized representative, .bank by entity not
  affiliated with banking sector

Source Covington Burling LLP
18
What Does All this Mean for Trademark Owners?

• Well ya got trouble my friend . . .
• Increased domain name registration costs
• Increased domain name recovery costs
• Adjustment of domain name portfolio management
  practices

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What Does All this Mean for Trademark Owners?

• The woes of Yahoo!

20
What Does All this Mean for Trademark Owners?

• The woes of Yahoo!

• As of 2007 Total Domain Portfolio Worldwide
  23,742

21
What Does All this Mean for Trademark Owners?

• Yahoox.com
• Yahotties.com
• Yahooters.com
• Yahoocams.com
• Yahoo-groups.net
• Yasexhoo.com
• XXYahoo.com

• Yahoux.com
• Yahoosexy.com
• SexoYahoo.com
• 69Yahoo.com
• Yahooxxx.com
• Yahookers.com
• Geotitties.com

22
What Does All this Mean for Trademark Owners?

• A Brave New World
• Opportunity to turn brands into TLDs trademark
  owners control
• Increased importance of search engines
• Increased importance of keywords

23
Rights Protection Mechanisms (RPM) Not Required

• No pre-launch RPM required
• Applicants may offer RPM to generate revenue
  and/or to avoid protests/litigation by trademark
  owners
• Start considering now whether and to what extent
  will participate in RPMs
• Number of new gTLDs means costs of participating
  in all RPMs may be prohibitive

Source Covington Burling LLP
24
Why Are RPMs Important for New TLDs?

• Attracts initial registrations
• Demonstrates commitment to protecting IP
• Provides balanced allocation methods
• Helps avoid legal expense
• Helps avoid legal liability

25
Types of RPMs

• Sunrise Periods
• Pre-registration period before TLD opens to
  public
• IP Claims Service
• Rights holder submits claim
• Sponsored TLDs
• Eligibility requirements and verification

26
Preferred Features of RPMs

• Eligibility cut off dates
• Eligibility verification
• Pre-registration Whois
• Challenge mechanism
• Pre-validation service
• Reconsideration service
• Resolution mechanism for competing applications

27
Practice Makes Perfect?

• Jeffrey Neuman
• .biz
• .us
• Bart Lieben
• .eu
• .asia

28
QA

• What are the advantages of validating or
  verifying the bona fides of applicants under a
  Sunrise scheme?
• Some registry operators have restricted
  applicants under a Sunrise to registered
  trademark rights only. Others have been more
  liberal allowing un-registered rights or pending
  applications. What would you recommend?

29
QA

• The most recent gTLD and ccTLD launches have
  featured Sunrise schemes but as .biz
  demonstrated, it is possible to develop other
  innovative procedures. If you were running the
  .biz RPM tomorrow, would you be conformist and
  use a Sunrise of some type or would you be
  innovative? Which is the safest commercial
  option?
• How can registry operators restrict the
  activities of speculators who have obtained
  expedited trademarks in order to apply for
  generic terms in a Sunrise? For example, would a
  requirement to demonstrate use of a trade mark be
  reasonable?

30
Thank you!

• visit www.inta.org
• Or
• www.marques.org