New Top Level Domains are here to come, get used to it

Despite the concerns expressed by the United States and the European Union, the Internet Corporation for Assigned Names and Numbers (ICANN) has decided to allow the creation of new generic Top Level Domains such as ".brand" or ".city". The slick video above produced by ICANN gives you some elementary info (if you prefer reading, ICANN's FAQ on the new gTLD may help).

Two important points from a trade mark owners' point of view are the requests of the US and EU to (a) eliminate the requirement proof of' “use” of the trademark for users of Sunrise, URS (Uniform Rapid Suspension System) and PPDRP (Post Delegation Dispute Resolution Protocol); (b) change the burdens of proof in URS and PDDRP from clear and convincing evidence to preponderance of the evidence. The ICANN board has declined to follow these suggestions on the rationale that the requirement of use deters gaming of the system and the higher standard of proof is appropriate in view of the drastic consequences of a positive decision in URS and PDDRP proceedings. Make sure your proof of use documents are up to date and accessible on short notice.

Another area of disagreement is the cross-ownership of registrars (those accredited to register domains in a TLD) and registry providers (those who keep the database of domain names, and generate the zone files which convert domain names to IP addresses, such as Nominet for .uk). Both the EU and the US fear anti-competitive effects if cross-ownership is permitted, but ICANN is undeterred. European Commission Vice President and Digital Agenda Commissioner Neelie Kroes has made it very clear that she is unhappy about ICANNs decision to allow cross-ownership. It is open to speculation what, if anything, the Government Advisory Committee will do about ICANN's ignoring its advice.

Afilias, a registry services provider, has published a brochure and a short film on the strategic aspects of the new TLDs entitled "Envisioning Your .Brand New World: A Field Guide for Brand Builders.". While there is commercial intent behind these resources, they are nonetheless a useful primer on the importance of the new TLDs for brand owners. Namely, you will have a period at the beginning of 2012 (as currently planned, has been postponed often) to submit a request to administer your own TLD registry to ICANN, and it is unclear when there will be another opportunity once this window has closed. That means that brand owners may have to decide whether they want to administer their own gTLD name space - which is quite costly (the application fee is USD 185,000, but it has been estimated that the whole process costs up to USD 1 mio. if you don't have the skills to run a registry in-house) - before they know what their competitors are doing; or to put it more bluntly, before they know whether owning your own TLD is hot or not.

If you want more in-depth information, the official Applicant Guidebook, which has undergone six revisions and gone from 97 to 360 pages, should provide you with all the details (note that it is still a draft and has not been officially put in force).

On a related note, IPKat has previously reported that the WIPO is very unhappy about ICANN's plans to reform the UDRP, and Eric Wilbers, Director of WIPOs Arbitration and Mediation Center, has re-iterated this position in an open letter dated 15 July 2011. The key message is "the UDRP should be left to do its job".

Even if it wished to do so, IPKat could not apply for the .cat TLD - because that is reserved for Catalonia, or rather, "the Catalonian speaking community irrespective of its geographic location" (because of "the reluctance of certain Catalan institutions, companies and people to use .es, .ad, .fr, .it domains"...). Websites accessible under a domain name in the .cat TLD must substantially be in Catalonian, and we believe they don't refer to meowing.