Optimizing online trademark protections given the proliferation of generic top level domains.
I. INTRODUCTION II. BACKGROUND A. The Internet's Basic Structure B. The Relevant Parties 1. The Internet Corporation for Assigned Names and Numbers (ICANN) 2. Registries and Registrars 3. Cybersquatters C. ICANN's Proposal to Expand the Number of gTLDs D. The Application Process III. ANALYSIS A. Problems Arising from the Proliferation of gTLDs 1. Problems Arising During the Application Process 2. Problems Arising Once Newly Appointed gTLDs Go Online B. Current Procedures and Processes 1. Procedures for Resolving Disputes During the Application Process 2. Some Problems with ICANN's Objection and String Contention Procedures 3. Procedures for Resolving Disputes Once Newly Approved gTLDs Are Launched 4. Difficulties Related to the Trademark Clearinghouse, Sunrise Service, and Trademark Claims Service IV. RECOMMENDATION A. Modifications to ICANN's Community Objection Process B. Expanding the Trademark Claims Service
Today, a person subscribed to a cable or satellite television service can instantaneously access several hundred unique channels filled with all types of programming. (1) Such variety in television content stands in stark contrast to an earlier time when only three broadcast networks--ABC, CBS, and NBC--effectively provided all of the content on television. (2) The relatively limited selection offered by these three networks, while meager by today's standards, was the accepted technological reality during those times. (3) But while television has emerged from its technological Dark Ages, today's Internet is still--by some measures--closer to television's bygone era than it is to television's current cable and satellite system.
Specifically, the Internet's hierarchical structure has remained fairly static since its inception in the 1980s. (4) In the early days of the World Wide Web, the Internet's regulatory agency established seven generic Internet Top-Level-Domains (gTLDs) such as ".com," ".net," and ".org" for public use. (5) At the end of 2012, the number of gTLDs had only modestly grown to a total of 22. (6) This is about to change. (7)
In 2011, the Internet Corporation for Assigned Names and Numbers (ICANN), which is the entity responsible for structuring the Internet, announced that it would--for the first time ever--take applications from private entities for the development of new gTLDs. (8) When the process is complete in a few years' time, over 1000 new gTLDs (9) could be added to the Internet creating a radical shift in both the way content is organized across the Internet and the way persons interact with this online content. (10) This Note explores the application process insofar as it has progressed through the end of 2012 and considers the new challenges arising from the proliferation of new gTLDs. After analyzing the application process, this Note concludes by recommending modifications to ICANN's current gTLD processes and policies that can help minimize inefficiencies in the application process and expand protections for trademark holders once the approved gTLDs become operational.
One will need a working familiarity with the Internet's current structure to understand the significance of ICANN's new gTLD application process. To that end, this Note begins with a brief overview of the information necessary for understanding the proliferation of new gTLDs. Included within this discussion is a description of the Internet's basic structure, (11) its regulatory entities, (12) and the other relevant parties associated with the World Wide Web's overall structure. (13) This Part concludes by presenting the anticipated timeline for the new gTLD application process. (14)
A. The Internet's Basic Structure
The Internet is an international network of interconnected computers that uses a common set of communications protocols to transmit, store, and allow access to data at a high rate of speed. (15) Because there are millions of computers connected to the Internet at any given time, the computers require an addressing system that allows them to locate one another on the network and ensure that the appropriate computer receives the data transmitted across the World Wide Web. (16) This system is organized by an Internet Protocol (IP) that assigns a unique designation to each computer connected to the Internet. (17) This unique designation is an IP address. (18) The IP address consists of a string of numbers in dotted decimal form that may appear as follows: 184.108.40.206. (19) If one computer wants to send a message to another, the first computer takes the information it wishes to transmit, divides the message into separate packets of information, and transmits the packets through the Internet with a header identifying the IP addresses of the sender and recipient(s). (20) So, for instance, if computer A wants to request information from computer B, A sends its request across the Internet using packets of information identifying computer B's IP address as the proper recipient. (21) Upon receiving the request, computer B reassembles the packets, processes the request, and responds by sending its own packets of information containing the appropriate information back to A by identifying A's IP address as the correct recipient. (22)
While it is easy for computers to understand the numerical structure of the IP address, the non-intuitive list of numbers can quickly prove difficult for persons accessing the Internet. (23) In response, the Internet's designers created a parallel address system called the Domain Name System (DNS) that links an alphanumeric domain name to a particular IP address. (24) This alphanumeric domain name, which is also known as the "Uniform Resource Locator" or "URL," allows the general Internet user to avoid numerical IP addresses and navigate the Internet using intuitive, recognizable, and memorable domain names. (25) Thus, the DNS allows a user to enter http://www.google.com (the domain name for Google's homepage) instead of 220.127.116.11 (Google's IP address) into her web browser when she wants to access Google's homepage. (26)
The DNS is a hierarchical database that is organized according to different domain levels much in the same way a physical mailing address is organized into several different hierarchical lines. (27) For example, if a person in Taiwan wanted to send a letter via the postal service to a friend in the United States, the sender might write the following delivery address:
123 Fake Street
Springfield, Iowa 52240
The post office, upon receiving the letter, reads the address starting with the bottom line first--that is, from the broadest hierarchical region or area to the most specific--to hone in on the precise location and proper recipient. (29) So, in this example, the postal service first reads "U.S.A.," which is the broadest level of organization in this delivery address, before moving on to "Springfield, Iowa 52240," which is the second level of organization, and on and on up the various lines of a mailing address until the postal service identifies "Johnny Chen" as the specific recipient of this letter. (30) A similar hierarchical principle holds true under the DNS. (31) Domain names are read from right to left and progress from the broadest level of organization--the Top-Level Domain (TLD)--to increasingly narrow levels of organization such as Second-Level (2LD), Third-Level (3LD), and higher-level domains. (32) So in Google's Gmail URL, which is http://mail.google.com, the TLD would be the ".com," the 2LD would be ".google," and the 3LD would be "mail." (33)
As of mid-2010, users of the Internet had registered nearly 200 million second-level domains across the various TLDs. (34) These second-level domains--which this Note simply calls "domain names"--are what most individuals, entities, and corporations secure via an ICANN-accredited registrar to have a URL for their website. (35) The TLDs themselves are further divided into two types: country-code Top-Level Domains (ccTLDs) and generic Top-Level Domains (gTLDs). (36) There are approximately 250 ccTLDs, which are generally two letters in length and contain domain names that exist for or within a particular country or region. (37) For instance, in the Australian government's homepage, http://australia.gov.au, the ".au" would be the ccTLD. (38) By contrast, the 22 gTLDs currently in existence are not linked to a particular country or region, but exist for the global Internet community. (39) Having presented the Internet's basic structure, this Note now describes the parties who play a significant role in the Internet's growth, development, and operation.
B. The Relevant Parties
The individuals, groups, and organizations involved with the DNS may be broadly categorized into one of three groups. First, there are the regulators and administrators who oversee the DNS and ensure the Internet's continued growth and development at all levels. (40) Second, there are the registrants themselves who apply for and, if successful, are assigned a second-level domain name by the DNS administrators to develop as the registrant sees fit. (41) While most registrants obtain domain names for legitimate uses, a portion of these registrants secure domain names solely to game the DNS for personal financial gain; these individuals comprise the third group known as "cybersquatters." (42) This Part explores each of these groups in turn.
1. The Internet Corporation for Assigned Names and Numbers (ICANN)
The Internet Corporation for Assigned Names and Numbers (ICANN) is the nonprofit partnership tasked with overseeing and coordinating the Internet's DNS and IP address systems so computers and their users are able to communicate and find information online. (43) Prior to ICANN's formation, the U.S. government directly controlled these regulatory functions. (44) Eventually, the government sought to transition control of the Internet "to private sector DNS management." (45) To this end, ICANN was formed in 1998 with a mission to ensure "the operational stability of the Internet" and promote global public interest by
(i) coordinating the assignment of Internet technical parameters as needed to maintain universal connectivity on the Internet; (ii) performing and overseeing functions related to the coordination of the Internet Protocol ("IP") address space; (iii) performing and overseeing functions related to the coordination of the Internet domain name system (DNS), including the development of policies for determining the circumstances under which new top-level domains are added to the DNS root system; (iv) overseeing operation of the authoritative Internet DNS root server system; and (v) engaging in any other related lawful activity in furtherance of items (i) through (iv). (46)
In short, ICANN oversees the availability of second-level Internet domain names, the number and types of TLDs under which these domain names are organized, and the process by which one may gain possession and control of a domain name. (47)
2. Registries and Registrars
Although ICANN has the broad purpose of Internet regulation, it relies upon separate entities known as registries and registrars to perform the day-to-day operations of maintaining the TLDs and registering domain names. (48) A registry's function is to maintain a gTLD's database of domain names so that a computer seeking to communicate with a particular IP address on that gTLD may query the registry's database to locate the appropriate IP address. (49) In effect, the registry's database acts as a phonebook of IP addresses on a particular gTLD. (50) The registrar, on the other hand, is responsible for interacting with customers and selling rights to domain names. (51) In practice, a person wanting to secure a domain name contacts an ICANN-accredited registrar (52) and submits an application along with the requisite fee (53) for the desired domain name, assuming it is available. (54) If the application is successful, the registrar assigns the domain name to the applicant, who then has control of that Internet domain. (55) At the same time, the registrar submits the applicant's relevant details to the registry operating that gTLD so that the registry may add the new domain name to its database. (56)
While the domain name registration system was designed to run smoothly, conflicts can arise when someone registers a domain name in bad faith to profit at the expense of a corresponding trademark held by a third party--this is called cybersquatting. (57) A trademark is defined as "any word, name, symbol, or device, or any combination thereof used ... or intended to be used ... to identify and distinguish his or her goods ... and to indicate the source of the goods." (58) Congress' purpose when it created trademark protections was to prevent forged, imitation, or confusingly similar products from reaching the market so that consumers could be confident they were purchasing genuine articles. (59)
Cybersquatters infringe upon trademarks on the Internet by registering domain names that either contain a third party's trademark or are confusingly similar. (60) Cybersquatters take advantage of the fact that trademark holders with limited resources cannot possibly register a limitless number of domain names online, and thus must only register a fraction of the domain names that might conceivably contain their trademark. (61) This limitation allows the cybersquatter to move in and register unclaimed domain names that contain a third-party trademark with the intent of selling these domain names back to the trademark holder at an inflated price. (62)
C. ICANN's Proposal to Expand the Number of gTLDs
On June 20, 2011, ICANN announced it would transform the current Internet domain system by accepting applications for new gTLDs. (63) A gTLD is part of the Internet's broadest level of organization and includes familiar Top-Level Domains like ".com," ".net," and ".org." (64) This unprecedented application process will add hundreds of new gTLDs to the current list of 2265 and would allow corporations and other "organizations around the world the opportunity to market their brand, products, community or cause in new and innovative ways." (66) Specifically, the new gTLDs would, for the first time, allow for branded gTLDs such as ".samsclub" or ".mcdonalds" and community-based gTLDs like ".democrat" or ".bank." (67) If an applicant is successful, then that applicant would be responsible for maintaining its new gTLD's registry and day-to-day operations. (68)
D. The Application Process
ICANN accepted applications for new gTLDs between January 12, 2012, and April 12, 2012, from "[established corporations, organizations, or institutions in good standing." (69) ICANN required applicants be in "good standing" because there are a number of duties and obligations--such as serving as the new gTLD's registry operator--that applicants must be able to perform if their applications are successful and they are granted a gTLD. (70) Ensuring "good standing" will help ICANN identify applicants whose strength and stability will help "minimise the risk of harming the operational stability, security and global interoperability of the Internet" and "provide an assurance that an applicant has the capability to meet its obligations [to ICANN]." (71)
The gTLD application included several distinct components. First, the application asked each applicant to answer a series of questions on their financial, technical, and operational capabilities so that ICANN could evaluate the applicant's fitness to become a gTLD registry operator. (72) Second, ICANN required each applicant to submit to a background screen to determine whether the applicant possessed general business diligence, a criminal history, or a history of cybersquatting. (73) Finally, ICANN levied a base evaluation fee of $185,000 payable at the time the application was submitted and gave notice of additional fees for extended application review or dispute resolution that had the potential to add an additional $150,000 or more to the cost of applying for and securing a gTLD. (74)
ICANN revealed a list of the applicants and the gTLDs for which they have applied shortly after the application submission period ended. (75) In all, 1268 applicants submitted applications for 1930 new gTLDs. (76) The vast majority of the gTLD applications were from North America and Europe, which had 911 and 675 applications respectively. (77) The Asia/Pacific region was the next most numerous with 303 applications while Latin America/Caribbean and Africa trailed significantly with only 24 and 17 applications respectively. (78) Although most of the applied-for gTLDs use Latin script characters (i.e., the English alphabet), 116 of the applications are in non-Latin script languages such as Chinese and Arabic. (79) Additionally, several U.S. tech companies participated heavily in the application process with Google (80) submitting 101 applications for gTLDs like ".google," ".youtube," and ".android," and Amazon applying for 76 domains including ".author," ".cloud," and ".game." (81)
Once the submission window closed, the applications entered an evaluation period where ICANN reviewed both the gTLD string proposed by the applicants and the capabilities of the applicants themselves. (82) In the string review, ICANN considered whether "the applied-for gTLD string [was] likely to cause security or stability problems in the DNS, including problems caused by similarity to existing TLDs or reserved names." (83) In the applicant review, ICANN evaluated an applicant's "requisite technical, operational, and financial capabilities to operate a registry." (84) If all went smoothly and ICANN raised no objections or issues, then the application could be approved in as little as nine months, at which time ICANN would begin transitioning delegation of the new gTLD registry to the applicant. (85) But if ICANN filed objections against the proposed gTLD because the gTLD infringed upon the rights and interests of third parties, or if there were doubts as to whether an applicant had the capabilities of functioning as a registrar, then the application process may take as long as 20 months to complete. (86) Given this timeframe, the first of the new gTLDs should become operational in 2013. (87)
Having described the Internet's general structure and ICANN's plan to expand the number of gTLDs on the World Wide Web, (88) this Part surveys some of the new challenges arising from the proliferation of gTLDs and considers whether ICANN's current procedures and processes sufficiently address these challenges. Topics discussed include: the difficulty in designating a registrar when two legitimate trademark holders are vying for the right to manage and operate a new gTLD; (89) a corporation's exponentially increasing exposure to cybersquatters as new gTLDs come online; (90) and the increased cost to corporations that wish to protect their trademarks by defensively registering domain names on available gTLDs. (91) Given these challenges, this Note discusses ICANN's proposed procedure for sorting out legitimate trademark disputes between gTLD applicants and third parties (92) and considers the costs to a corporation for defensively registering domain names. (93)
A. Problems Arising from the Proliferation of gTLDs
The launch of new gTLDs will create several new challenges for gTLD applicants and third-party corporations. (94) This Part organizes these issues as: (1) problems related to the application process; and (2) problems arising once the approved gTLDs launch. (95) As part of the latter category, this Part also considers the new gTLDs' possible financial impact on corporations. (96)
1. Problems Arising During the Application Process
One point of contention that surfaced in the gTLD application process is which applicant, if any, should gain control of a proposed gTLD when there are multiple entities with legitimate claims upon that gTLD. (97) These disputes may arise because a proposed gTLD contains some or all of an applicant or third party's registered trademark. 98 In trademark law, marks that are visually, phonetically, or conceptually similar can coexist if the similarity will not likely cause confusion. (99) For instance, companies such as Delta Dental, Delta Airlines, and Delta Faucets are all able to simultaneously maintain a trademark that uses the word "Delta" because there is a low likelihood of consumer confusion given the radically different industries in which these companies operate. (100) However, in the case of new gTLDs, there may not be any similar or identical gTLDs, which means that Delta Dental, Airlines, and Faucets would not be able to each operate their own ".delta" gTLD. (101) As such, the availability of new gTLDs is more akin to the ability to secure a parcel of real property than it is to the ability to register a trademark. (102) Once an applicant claims a gTLD, and ICANN legitimatizes that claim, control of that gTLD is no longer available to any other trademark holders. (103) Thus, the challenge for ICANN is whether it can efficiently and fairly allocate a gTLD when there are multiple trademark holders--either other applicants or third parties--who are voicing their interest in a new gTLD. (104)
Furthermore, ICANN will still face the problem of assigning control of a new gTLD even if a registered trademark is not involved. For example, 12 different entities--including both Google and Amazon--have applied for the ".app" gTLD. (105) The same is true for the proposed gTLD ".shop," which has nine registry applicants. (106) Proposed gTLDs such as these will likely be the most coveted because they represent rapidly growing markets in mobile applications (107) and online shopping. (108) Given this situation, ICANN will need to determine to whom they will ultimately assign the prized gTLD.
2. Problems Arising Once Newly Appointed gTLDs Go Online
Another problem that will intensify once the new gTLDs become operational is a corporation's exponential exposure to cybersquatters, whose activities negatively impact companies, dilute trademarks, and create customer confusion. (109) The case, Verizon California Inc. v. Navigation Catalyst Systems, Inc., provides a glimpse into the cybersquatting problem. (110) In Verizon, the defendant employed an automated system that was capable of registering hundreds of thousands of domain names in order to systematically register available domain names and measure the amount of Internet traffic those domains received during a no-commitment grace period. (111) Presumably, if the domain generated sufficient levels of Internet traffic, the defendant would pay the registration fee and secure the domain for itself. (112) Verizon brought suit because certain domain names the defendant registered, such as "ve3rizon.com, veri8zon.net, veri9zonwireless.com, verisonbilling.com, vzstore.com, [and] vzwphones.com," infringed upon Verizon trademarks. (113) In total, the defendant had registered "at least 1,392 domain names that [were] confusingly similar to [Verizon's] marks." (114)
The Verizon case illustrates the current cybersquatting problem. (115) Each registered trademark can have literally thousands of variations and permutations that a cybersquatter may secure. (116) While a corporation may defensively register a subset of these domain names, it would be financially impractical to register all of the possible combinations on the 22 current gTLDs. (117) For example, suppose that a corporation has registered 20 distinct marks and that each mark has 100 possible variations. (118) Further assume that each domain name costs $10.72 to register per year. (119) Under this scenario, the corporation would need to spend $21,440 (120) per year to register all of the possible domain name variations. of course, this cost is only for registering domain names on a single gTLD, and the cost would grow exponentially with the addition of each new gTLD because the same second-level domain name would need to be registered on each different gTLD. (121) Thus, even if corporations added only a quarter of the 1930 applied for gTLDs through ICANN's application process, (122) a corporation would need to spend an additional $10,344,800 per year (123) just to register all the possible variations on all the available gTLDs. A defensive approach is untenable, and a more efficient and cost-effective process must be established. (124)
B. Current Procedures and Processes
ICANN released an "Applicant Guidebook" with the procedures governing the entire gTLD application process. (125) Included within these procedures are the proper steps one must take to challenge a proposed gTLD. (126) This Part discusses ICANN's procedures for resolving legitimate disputes among gTLD applicants and third parties during the application process. (127) Next, this Part examines the systems and tools for combating cybersquatters on newly approved gTLDs once they become operational. (128)
1. Procedures for Resolving Disputes During the Application Process
When a third-party objector believes that a proposed gTLD would compromise certain interests or rights, that third party may file a formal objection during the gTLD application process. (129) Objectors may choose from four different grounds for objection, provided that the objectors are able to show they have proper standing to object. (130) First, an objector who is a rights holder may file a Legal Rights Objection claiming that the proposed gTLD infringes upon the objector's existing intellectual property rights. (131) under this cause of action, a dispute resolution panel considers whether the applied-for gTLD "takes unfair advantage of the distinctive character or reputation of the objector's [mark,] ... unjustifiably impairs the distinctive character or reputation of the objector's mark ..., or otherwise creates an impermissible likelihood of confusion...." (132) Second, any person or entity may, in good faith, file a "Limited Public Interest Objection" that alleges the proposed gTLD "is contrary to general principles of international law for morality and public order." (133) For instance, the panel may reject a proposed gTLD if it would incite or promote "violent lawless action," discrimination, "child pornography or other sexual abuse of children," or other "specific principles of international law." (134) Third, an objector who is a legitimate and recognized institution representing "a clearly delineated community" may file a "Community Objection" opposing a proposed gTLD that targets the community. (135) To succeed, the objector must prove it is part of a "clearly delineated community." (136) ICANN states that the objector must "[d]emonstrate an ongoing relationship with a clearly delineated community" to properly assert an objection on behalf of the community. (137) If this is accomplished, then the objector must show there is substantial objection from that community because the proposed gTLD would create "a likelihood of material detriment to the rights or legitimate interests of a significant portion of the community." (138)
While third parties would rely upon the first three grounds of objection, a fourth ground of objection called a String Confusion objection is available to other gTLD applicants or a current TLD operator. (139) String Confusion Objections are raised in one of two situations. (140) First, when two or more applicants have applied for the same gTLD, or alternatively, when two or more gTLDs would create "a probability of user confusion if more than one of the strings is delegated." (141)
Assuming an application survives the first three grounds for objection, (142) ICANN considers whether a String Confusion exists because the proposed gTLDs are either in direct or indirect contention with one another. (143) If a conflict exists, ICANN will first try to resolve the issue through its Community Priority Evaluation Procedure (CPEP), or--if the CPEP fails--ICANN will assign the contested string by auction. (144) The CPEP uses four factors to assess and score the conflicting gTLD strings: "community establishment," "nexus between the proposed string and community," "registration policies," and "community endorsement." (145) under this process, each proposed gTLD involved in a String Confusion Objection must meet a minimum score requirement to continue in the evaluation process. (146) If the scoring process does not resolve the dispute, (147) and the proposed gTLDs are in direct conflict with one another, then the conflicting strings will enter an auction where the price to apply for the gTLD is artificially increased beyond the standard application fee--which has already been paid by the applicants--until a sufficient number of applicants choose to abandon their application, thereby eliminating the direct string contentions. (148) The remaining applicants would then continue in the review process. (149)
2. Some Problems with ICANN's Objection and String Contention Procedures
An analysis of ICANN's Objection and String Contention Procedures reveals some suboptimal approaches in ICANN's review process. (150) One weakness is in the standard set by ICANN for a challenger to prove standing and prevail in a Community Objection. (151) For a Community Objection to succeed, one of the elements the objector must prove is that the objector represents a clearly delineated community. (152)
This requirement can be problematic in instances where communities are distinct yet highly decentralized. (153) For example, suppose an applicant wishes to secure the ".activist" gTLD to create an online space for activism. Although activists may be a community in the sense that they share a common interest in encouraging action to effect societal change, that connection would likely be insufficient to show that activists as an overarching group are a well-delineated community. (154) Tea Partiers and Occupy Wall Street protestors are both reasonably termed activist groups, but one may hardly find any sort of formal boundary that encapsulates both of these movements. (155) Thus, activists who object to the proposed gTLD may fail even if they can show substantial opposition and material detriment because they are unable to identify a sufficiently well-delineated community. (156)
3. Procedures for Resolving Disputes Once Newly Approved gTLDs Are Launched
ICANN has also created procedures for preventing cybersquatters from registering second-level domain names that infringe upon recognized trademarks after the launch of the approved gTLDs. (157) These protections are largely built upon a Trademark Clearinghouse developed by ICANN, which serves as "a central repository for information to be authenticated, stored, and disseminated, pertaining to the rights of trademark holders." (158) Registering with this central repository will allow trademark holders to better protect their marks once ICANN launches the new gTLDs because those marks listed with the Trademark Clearinghouse will receive protection from ICANN's Sunrise Service and Trademark Claims Service. (159)
First, the Sunrise Service is a feature that gives all parties who have registered marks with the Trademark Clearinghouse the option to register those marks as second-level domain names on a new gTLD during a 30-day pre-launch period. (160) The 30-day pre-launch period, which is a window of time immediately before the new gTLD is first made available to the general public, would effectively give trademark holders first rights to a domain name ahead of cybersquatters. (161) In theory, the Sunrise Service would help thwart cybersquatting by allowing legitimate trademark holders to secure their marks on a new gTLD before cybersquatters even have an opportunity to register an infringing domain name. (162)
Second, the Trademark Claims Service is a notification service that new gTLDs must provide to trademark holders and domain name registrants who participate in the Clearinghouse. (163) ICANN requires new gTLDs to provide this service for at least the first 60 days a new gTLD is open and available to the general public. (164) This Service would notify general registrants that the domain name they wish to register matches a mark registered in the Clearinghouse by another trademark holder. (165) If the potential registrant chooses to proceed with the registration process, the Trademark Claims Service would then notify the trademark holder of the registered domain name. (166)
4. Difficulties Related to the Trademark Clearinghouse, Sunrise Service, and Trademark Claims Service
While these services afford some level of protection to trademark holders, their limited scope does not provide sufficient trademark protections in this new gTLD application process. (167) Even though the Sunrise Service has been effective in previous ccTLD launches, (168) the difference in the upcoming gTLD launch is that many more gTLDs will go online during a relatively short period of time. (169) These successive launches of scores of new gTLDs combined with the relatively narrow 30-day pre-launch period for each gTLD may make it difficult for corporations to track when exactly each window of opportunity opens and closes. (170) If this is so, they may miss out on the opportunity to protect their marks from cybersquatters. (171)
Additionally, the Trademark Claims Service is insufficient because it is only designed to report registered domain names that "consist of the complete and identical textual elements of the mark" to the registered trademark holder. (172) This notification system would exclude plural forms of the mark or domain names that merely contain the mark. (173) This approach is problematic because it is under-inclusive and fails to identify a significant number of infringing domain names. (174) Recall that in the Verizon case, Verizon identified the following domain names as examples of the defendant infringing upon Verizon's marks: "ve3rizon.com, veri8zon.net, veri9zonwireless.com, verisonbilling.com, vzstore.com, [and] vzwphones.com." (175) Of these six examples, none would trigger a notification in the Trademark Claims Service. (176) The examples would not trigger a notification because the first four domain names do not contain "the complete and identical textual elements" of Verizon's marks, while the last two domain names merely contain Verizon's mark within a longer domain name. (177) The inability of the notification system to identify a significant number of infringing domain names greatly reduces the usefulness and effectiveness of this Trademark Claims Service. (178)
ICANN's approach to the new gTLD application process has created several suboptimal procedures that may be improved through modification or expansion. This Part suggests ways of bringing about these improvements. This Part begins by recommending changes to ICANN's Objection and String Contention procedures before advocating for expanding the scope and duration of the Trademark Claims Service.
A. Modifications to ICANN's Community Objection Process
While much of ICANN's gTLD application process is well-crafted and efficient, ICANN could improve certain portions of the process to eliminate unnecessary inefficiencies. This Part focuses on a proposal to amend the requirements of a successful Community Objection. The Community Objection is one of four types of objections that third-party objectors may lodge during the gTLD application process. (179) One concern with ICANN's objection procedures is that any Community Objection requires the third-party objector to prove that the objector represents a clearly delineated community if the objection is to succeed. (180) To establish that a clearly delineated community exists, the objector must delve into: the public recognition of the group; its formal boundaries, if any; the length of its existence; and its relative size and composition. (181) This burden upon the objector is overly stringent considering ICANN only requires applicants who are proposing a community-based gTLD to provide a written endorsement from the targeted community. (182) This written endorsement is a relatively lower standard because a single endorsement can be sufficient and the endorsement itself need not describe the relative merits of the community in question. (183) Thus, the objector appears to be held to a stricter standard of proof than the applicant when it comes to identifying a clearly delineated community. This imbalance should be corrected.
As such, this Note recommends that ICANN amend the language in the objection Procedures so that a person or entity filing a Community Objection need not "prove that the community expressing opposition can be regarded as a clearly delineated community." (184) Instead, the Objection Procedure should require that the objector be able to show that she is a member or participant in the clearly delineated community identified by the applicant. under this recommendation, an applicant proposing a community-based gTLD is not merely "expected" to offer a gTLD that coheres with a clearly delineated community; the applicant is required to "prove" the existence of a clearly delineated community to the standards demanded of a third-party objector filing a Community objection. The advantage in this approach is that it explicitly requires proof of a clearly delineated community from the applicant before the application even reaches the objection phase. This approach will knock out a portion of the applications, reduce the overall number of objections, and streamline the application process.
B. Expanding the Trademark Claims Service
This Note has identified problems arising after a gTLD is approved and launched. (185) In particular, the Trademark Claims Service that ICANN has proposed would not provide adequate protections to corporations from cybersquatters. ICANN proposes not to provide adequate protections to corporations because the instances in which the Trademark Claims Service will report a potential infringement to the trademark holder is under-inclusive and the time period during which ICANN requires the Trademark Claims Service to be in effect is too brief. (186) In response, this Note proposes that ICANN expand the Trademark Claims Service by making the Service a permanent feature for all gTLDs and broadening the instances when trademark holders would be notified of attempts to register an infringing domain.
1. Requiring an Ongoing Trademark Claims Service
First, ICANN should require that gTLD registrars provide the Trademark Claims Service (187) to registrants and trademark holders beyond "the first 60 days that registration is open for general registration" by making the service permanent. (188) While the current requirement covers a gTLD's initial launch period, it allows each new gTLD operator the ability to decide whether it wants to offer the service beyond the 60-day period. (189) One negative effect of this approach is that it could create a patchwork trademark protection system that will neither be useful nor reliable for trademark holders wishing to protect their marks in the long run. Trademark holders would not be able to rely on the service as a way of protecting their marks across all gTLDs because they would not be able to predict if or when a gTLD operator will drop out of the Trademark Claims Service. A more sound approach would be to require that all gTLD registrars perpetually make the Trademark Claims Service available to rights holders and registrants. This will bring a level of consistency to trademark protection for the rights holder. At the same time, the gTLD operator would not be overly burdened by this requirement because the operator can compensate for the cost of the service by factoring those costs into the price of each domain name.
2. Expanding the Instances When Trademark Holders Would Be Notified of Infringement
Second, the Trademark Claims Service should increase the types of domain names that would trigger a notification for the trademark holder. (190) Presently, the trademark holder would only be notified if the applied-for domain names "consist of the complete and identical textual elements of the mark." (191) The problem with this limited notification scheme is that many types of clearly infringing domain names would not be brought to the trademark holder's attention.
To correct this under-inclusion, this Note proposes that the Trademark Claims Service also notify rights holders when third-party registrants apply for domain names that contain: (1) common misspellings; (2) typographical mistakes in the form of transposed letters; and (3) typographical mistakes that add or delete a single character from a trademark. The inclusion of common misspellings in the notification system would catch infringing domain names like verisonbilling.com, where the "s" has replaced the "z" in the trademark. (192) The "transposed letters" requirement would identify situations where the order of two letters in a trademark has been reversed. For instance, the Service would notify Prudential Financial if a third party attempted to register the domain name prudentail.com, where the "a" and "i" have been reversed. Lastly, the "added or deleted character" requirement would be able to flag domain names like "ve3rizon.com, veri8zon.net, veri9zonwireless.com" where an identifiable mark has been modified with the insertion of a single character. (193)
The goal in this expansion of the notification process is to balance a company's interest in protecting a trademark with the threat of marginally decreasing effectiveness if a trademark holder is overwhelmed with too many notifications. The proposed expansion of the notification hopes to balance these competing interests, but realizes that there may be certain rights holders who may not want to be notified in all of these situations. If this is so, then the Trademark Claims Service should also incorporate some sort of customizable feature that allows a trademark holder to opt-in or out of certain types of notifications. This way, each individual rights holder may tailor the service to better suit her own needs.
ICANN's announcement in June 2011 marked an unprecedented advancement in the online world. Because no technological advance is without its challenges, this Note hopes to have contributed to an efficient and effective solution to these problems. Just as the advent of cable television ushered in a new era in broadcast media and created opportunities for many more networks that target distinct lifestyles or interests, so too the proliferation of new gTLDs may radically transform the way people and businesses engage with one another in the online world.
(1.) See DirectTV Packages, DirectTV, http://www.directv.com/DTVAPP/content/packages/overview ?lpos=header (last visited Mar. 12, 2013) (advertising the scope and breadth of content available through the company's satellite television services); XFINITY TV from Comcast, Comcast, http://www.comcast.com/ Corporate/Learn/DigitalCable/digitalcable.html (last visited Mar. 12, 2013) (describing the channels, content, and devices accessible through Comcast's digital cable services).
(2.) See Roni Mueller & Gretchen Wettig, The "New" Series Co-Production Deal in Network Series Television, 31 Sw. U. L. Rev. 627, 629 (2002) ("These networks, known as the 'big three,' competed only against each other for control of the television viewing audience, primarily because no other viable competition existed.").
(3.) See Tamber Christian, The Financial Interest and Syndication Rules--Take Two, 3 CommLaw Conspectus 107, 107 (1995) ("In 1970, ABC, NBC and CBS comprised virtually the entire video industry. Since that time, cable television service has emerged to the point of nearly offering five hundred channels.").
(4.) See Top Level Domains (gTLDs), Internet Corp. for Assigned Names & Numbers, http://www.icann.org/en/tlds/ (last visited Mar. 12, 2013) (describing the introduction of the Domain Name System and the seven original gTLDs introduced in the 1980s that are still in use today).
(7.) ICANN Approves Historic Change to Internet's Domain Name System, Internet Corp. for Assigned Names & Numbers (June 20, 2011), http://www.icann.org/en/announcements/announcement-20jun 11-en.htm.
(9.) While the exact number of new gTLDs that the application process will create will not be known until the entire process has concluded, the 1000+ estimate is reasonable given the nearly 2000 applications ICANN has received. Program Statistics, Internet Corp. for Assigned Names & Numbers, http://newgtlds.icann.org/en/program-status/statistics (last updated Feb. 19, 2013). ICANN itself has stated: "There is no way of knowing the exact number of applications ICANN will receive nor how many of these applications will qualify and become gTLD registries. Market speculations have varied widely." New Generic Top-Level Domains: Frequently Asked Questions, Internet Corp. for Assigned Names & Numbers, http://newgtlds.icann.org/en/applicants/customer-service/faqs/faqs-en (last visited Mar. 12, 2013).
(10.) See Steven Musil, ICANN Approves Expansion of Top-Level Domains, CNET (June 19, 2011, 11:13 PM), http://news.cnet.com/8301-1023_3-20072478-93/icann-approves-expansion-of-top-level-domains/ (reporting ICANN's hope that the new gTLDs will "unleash the global human imagination").
(11.) See infra Part II.A (laying out the Internet's organizational structure).
(12.) See infra Part II.B. 1-2 (introducing ICANN, registries, and registrars).
(13.) See infra Part II.B.3 (describing cybersquatting).
(14.) See infra Parts II.C-D (presenting ICANN's gTLD application process and timeline).
(15.) 47 U.S.C. [section] 230(f)(1) (1998) ("The [legal definition of] 'Internet' means the international computer network of both Federal and non-Federal interoperable packet switched data networks."); David Lindsay, International Domain Name Law: ICANN and the UDRP 1 (2007).
(16.) Christopher G. Clark, Note, The Truth in Domain Names Act of 2003 and a Preventative Measure to Combat Typosquatting, 89 Cornell L. Rev. 1476, 1482-83 (2004).
(17.) There are two main parts to an IP address: "the network prefix ..., which identifies the network a computer is attached to; and the host ID ..., which identifies the logical location of the host computer on the network." Lindsay, supra note 15, at 5.
(20.) Id. at 4-5.
(21.) See id. at 4 ("For messages to be transmitted across computer networks, information regarding the logical location of the destination computer is required.").
(22.) Lindsay, supra note 15, at 4-5.
(23.) See Lisa M. Sharrock, The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from Within the UDRP Framework, 51 Duke L.J. 817, 817 (2001) (describing the Domain Name System as "providing a 'human friendly' method of Internet navigation").
(24.) konstantinos komaitis, the current state of domain name regulation: domain names as Second-Class Citizens in a Mark-Dominated World 41 (2010).
(25.) Clark, supra note 16, at 1483.
(26.) Anyone may verify that both address systems will take a user to the same Google homepage by entering either the IP address or URL into a web browser and instructing the web browser to navigate to that website.
(27.) See Komaitis, supra note 24, at 42 (discussing the distinct parts found in a domain name); Joshua J. Mclntyre, Balancing Expectations of Online Privacy, 60 DePaul L. Rev. 895, 899-900 (2011) (analogizing IP addresses to physical mailing addresses).
(28.) Business Mail 101, U.S. Postal Service, http://pe.usps.com/businessmail101/addressing /deliveryaddress.htm (last visited Mar. 12, 2013).
(30.) See id. (describing the order in which delivery addresses are read).
(31.) Lindsay, supra note 15, at 6-11; Komaitis, supra note 24, at 41-42.
(32.) Komaitis, supra note 24, at 42.
(33.) See id (using the author's description to provide a concrete example of how the DNS works).
(34.) Press Release, Verisign, Inc., Internet Grows to More than 196 Million Domain Names in Second Quarter of 2010 (Sept. 21, 2010), available at https://investor.verisign.com/releasedetail.cfm?releaseid=674797.
(35.) For example, if XYZ Corporation wants to develop an online presence for its company, the corporation may contact an ICANN-accredited registrar (i.e., GoDaddy.com, Register.com) to secure the rights to ".xyzcorp" (the second-level domain name) on the ".com" gTLD. If successful, XYZ Corporation would obtain the following URL: http://www.xyzcorp.com.
(36.) Top Level Domains (gTLDs), supra note 4.
(38.) Australian Gov't, http://australia.gov.au/ (last visited Mar. 12, 2013).
(39.) Top Level Domains (gTLDs), supra note 4. The seven original gTLDs (.com, .edu, .gov, .int, .mil, .net, and .org) were introduced in the 1980s. Id. The year 2000 ushered in an additional seven gTLDs (.biz, .info, .name, .pro, .aero, .coop, and .museum), 2003 brought forth six more (.asia, .cat, .jobs, .mobi, .tel, and .travel), and 2011 saw the launch of the pornographic .xxx gTLD. Id.; see also ICANN-Accredited Registrars, Internet Corp. for Assigned Names & Numbers, http://www.icann.org/registrar-reports/accreditedlist.html (last visited Mar. 12, 2013) (providing a complete list of currently active gTLDs and accredited registrars).
(40.) See infra notes 43-56 and accompanying text (discussing ICANN, registries, and registrars as the regulators and administrators of the DNS).
(41.) See infra notes 50-55 and accompanying text (summarizing the role of individuals or groups who apply for a domain name with a registrar).
(42.) See infra notes 57-62 and accompanying text (highlighting the disruptions cybersquatting activities caused).
(43.) What Does ICANN Do?, Internet Corp. for Assigned Names & Numbers, http://www.icann.org/ en/participate/what-icann-do.html (last visited Mar. 12, 2013).
(44.) Jerry Brito, ICANN vs. the World, Time: Techland (Mar. 5, 2011), http://techland.time.com/2011/ 03/05/icann-vs-the-world/.
(45.) Memorandum of Understanding Between the U.S. Dep't of Commerce and Internet Corp. for Assigned Names & Numbers (Nov. 25, 1998), available at http://www.icann.org/en/general/icann-mou-25 nov98.htm.
(46.) Internet Corp. for Assigned Names & Nos., Articles of Incorporation of Internet Corporation for Assigned Names and Numbers (Nov. 21, 1998), available at http://www.icann.org/en/general/articles.htm.
(47.) See Lindsay, supra note 15, at 40-92 (discussing ICANN's origins, structure, mission, and functions).
(48.) See id at 82-89 (describing ICANN's registry and registrar agreements and the roles and functions of the registries and registrars); Brian W. Borchert, Note, Imminent Domain Name: The Technological Land-Grab and ICANN's Lifting of Domain Name Restrictions, 45 Val. U. L. Rev. 505, 510-11 (2011) ("Beyond the technical aspects of the DNS, the overall system is maintained by two groups: the registry and the registrars. According to the most recent statistics, there are currently 943 accredited domain name registrars and twenty official registries.").
(49.) Lindsay, supra note 15, at 38; Komaitis, supra note 24, at 43-44.
(50.) See Komaitis, supra note 24, at 43-44 (analogizing the structure presented by Lindsay and Komaitis).
(51.) See Statement of Registrar Accreditation Policy, Internet Corp. for Assigned Names & Numbers, http://www.icann.org/en/registrars/policy_statement.html (last visited Mar. 12, 2013) (detailing a registrar's roles and functions).
(52.) See ICANN-Accredited Registrars, supra note 39 (providing a complete list of accredited registrars).
(53.) See infra note 119 (providing examples of the cost of applying for a domain name).
(54.) Lindsay, supra note 15, at 87-89.
(57.) A. Michael Froomkin, ICANN's "Uniform Dispute Resolution Policy"--Causes and (Partial) Cures, 67 Brook. L. Rev. 605, 608 (2002).
(58.) Kenneth Sutherlin Dueker, Note, Trademark Law Lost in Cyberspace: Trademark Protection for Internet Addresses, 9 Harv. J.L. & Tech. 483, 485 (1996) (citing 15 U.S.C. [section] 1127 (1994)).
(59.) See id. at 488 (citing S. Rep. No. 79-1333 (1946), reprinted in 1946 U.S.C.C.A.N. 1274, 1274; S. Rep. No. 100-515, at 4 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5605) ("The purpose underlying any trade-mark statute is twofold. One is to protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get. Secondly, where the owner of a trademark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats.").
(60.) Neil L. Martin, Note, The Anticybersquatting Consumer Protection Act: Empowering Trademark Owners, but Not the Last Word on Domain Name Disputes, 25 J. Corp. L. 591, 593 (2000).
(61.) Id. at 593-94.
(63.) ICANN Approves Historic Change to Internet's Domain Name System, Internet Corp. for Assigned Names & Numbers (June 20, 2011), http://www.icann.org/en/announcements/announcement20jun11-en.htm.
(64.) See supra notes 23-39 and accompanying text (providing more detail on gTLDs and the Internet's overall hierarchical structure).
(65.) Initially, there were only seven gTLDs when the DNS was first implemented in the 1980s. Top Level
Domains (gTLDs), supra note 4. Since November 2000, ICANN has--through an internal discussion and review process--created additional gTLDs for public use. Id. This is the first time ICANN has ever accepted applications for the creation of new gTLDs. ICANN Approves Historic Change to Internet's Domain Name System, supra note 63.
(66.) ICANN Approves Historic Change to Internet's Domain Name System, supra note 63; see also Eric Pfanner, An Explosion in Universe of Web Names, N.Y. Times, June 19, 2011, http://www.nytimes.com/ 2011/06/20/technology/20iht-cache20.html?pagewanted=all/ (discussing implications of the application process).
(67.) Pfanner, supra note 66.
(68.) See supra notes 48-50 and accompanying text (describing the role of the registry operator); infra note 85 and accompanying text (highlighting the applicant's obligation to become the new gTLD's registry operator).
(69.) Internet Corp. for Assigned Names & Nos., gTLD Applicant Guidebook--Module 1: Introduction to the gTLD Application Process 1, 2-3, 21-22 (June 4, 2012) [hereinafter Module 1: Introduction], available at http://newgtlds.icann.org/en/applicants/agb/intro-04jun12-en.pdf.
(70.) Id. at 21-25.
(71.) Summary--Principles, Recommendations, & Implementation Guidelines, Internet Corp. for Assigned Names & Numbers (Oct. 22, 2008), http://gnso.icann.org/issues/new-gtlds/summary-principlesrecommendations-implementation-guidelines-22oct08.doc.pdf.
(72.) Module 1: Introduction, supra note 69, at 39-41.
(73.) Id. at 21-24.
(74.) Id. at 42-46.
(75.) Applied-for New gTLD Strings, Internet Corp. for Assigned Names & Numbers (June 13, 2012), http://newgtlds.icann.org/sites/default/files/reveal/strings-1200utc-13jun12-en.pdf.
(76.) Kevin Murphy, ICANN Expects at Least 1,268 New gTLD Applications, DomainIncite (Apr. 30, 2012, 11:00), http://domainincite.com/8721-icann-expects-at-least-1268-new-gtld-applications?utm_source= feedburner&utm_medium=feed&utm_campaign=Feed%3A%20DomainIncite%20%28DomainIncite.com%29; Program Statistics, supra note 9.
(77.) Program Statistics, supra note 9.
(80.) Google has created a wholly owned subsidiary called Charleston Road Registry, Inc. to submit its new gTLD applications. Sean Michael Kerner, Who Is Charleston Road Registry? The Leading gTLD Applicant, InternetNews.com (June 15, 2012), http://www.internetnews.com/blog/skerner/who-is-charlestonroad-registry-the-leading-gtld-applicant.html.
(81.) Martin Bryant, Apple, Google, Microsoft, Yahoo, and Amazon Are Among the Tech Companies Applying for Their Own Top Level Domains, The Next Web (June 13, 2012), http://thenextweb.com/ insider/2012/06/13/apple-google-yahoo-microsoft-and-amazon-are-among-the-tech-companies-applying-fortheir-own-top-level-domains/; see also Applied-for New gTLD Strings, supra note 75 (providing the raw data on gTLD applications and applicants).
(82.) Module 1: Introduction, supra note 69, at 8-10.
(83.) Id. at 9.
(85.) Id. at 14-16.
(86.) Id. at 14-20.
(87.) This date is extrapolated from the end of the application period in April 2012 and ICANN's 9- to 20month timeline. Nine months after April 2012 is January 2013, and 20 months after April 2012 is December 2013. See New gTLD Program Timeline, INTERNET CORP. FOR ASSIGNED NAMES & NUMBERS, http://www.icann.org/en/minutes/timeline-new-gtld-program-20jun11.pdf (last visited Mar. 12, 2013) (providing a general timeline of the application process).
(88.) See supra Part II (providing background on the Internet and gTLDs).
(89.) See infra Parts III.A.1, III.B.1 (analyzing the objection and string contention procedures).
(90.) See infra Part III.A.2 (identifying the likely increase in cybersquatting once new gTLDs are launched and describing the financial costs for a corporation taking defensive measures against cybersquatters).
(91.) See infra Part III.A.2.
(92.) See infra Parts III.A.1, III.B.1 (discussing the challenge such disputes pose to ICANN and the procedures it uses to resolve these disputes).
(93.) See infra Part III.A.2 (suggesting that a defensive strategy is likely cost-prohibitive for most corporations).
(94.) See infra Part III.A.1-2 (discussing two categories of challenges the proliferation of gLTDs will create).
(95.) Infra Part III.A.1-2.
(96.) See infra notes 118-23 (discussing the cost of defensively registering domain names).
(97.) See generally Internet Corp. for Assigned Names & Nos., gTLD Applicant Guidebook-Module 3: Objection Procedures (June 4, 2012) [hereinafter Module 3: Objection Procedures], available at http://newgtlds.icann.org/en/applicants/agb/objection-procedures-04jun12-en.pdf (establishing the protocols for challenging an application for a new gTLD); Internet Corp. for Assigned Names & Nos., gTLD Applicant Guidebook--Module 4: String Contention Procedures (June 4, 2012) [hereinafter Module 4: String Contention], available at http://newgtlds.icann.org/en/applicants/agb/string-contentionprocedures-04jun12-en.pdf (giving other applicants and current registrars an opportunity to object).
(98.) See Module 3: Objection Procedures, supra note 97, at 6 (describing the legal rights objection that claims a trademark is being infringed by a proposed gTLD string).
(99.) Christine Haight Farley, Convergence and Incongruence: Trademark Law and ICANN's Introduction of New Generic Top-Level Domains, 25 J. Marshall J. Computer & Info. L. 625, 627-28 (2009).
(101.) Module 4: String Contention, supra note 97, at 3.
(102.) See Dan Hunter, Cyberspace as Place and the Tragedy of the Digital Anticommons, 91 Calif. L. Rev. 439, 443 (2003) (understanding cyberspace through analogy to other areas of law such as property).
(103.) Internet Corp. for Assigned Names & Nos., gTLD Applicant Guidebook--Module 5: Transition to Delegation 2-4 (June 4, 2012) [hereinafter Module 5: Transition to Delegation], available at http://newgtlds.icann.org/en/applicants/agb/transition-delegation-04jun12-en.pdf.
(104.) See generally Module 3: Objection Procedures, supra note 97 (providing ICANN's process for handling objections); Module 4: String Contention, supra note 97 (outlining ICANN's procedure for resolving string contentions).
(105.) .app, NewgTLDsite, http://www.newgtldsite.com/dot-app-tld-domain-name-extension/ (last visited Mar. 12, 2013); see also Applied-for New gTLD Strings, supra note 75 (providing the full list of all applicants and proposed gTLDs).
(106.) .shop, NewgTLDsite, http://www.newgtldsite.com/dot-shop-tld-domain-names/ (last visited Mar. 12, 2013).
(107.) See Kathleen De Vere, Tracking Growth: The iTunes App Store vs Google Play, Inside Mobile Apps
(Sept. 26, 2012), http://www.insidemobileapps.com/2012/09/26/tracking-growth-the-itunes-app-store-vsgoogle-play/ (stating that Google Play and the iTunes App Store each had well over 500,000 applications available in their inventory for users to purchase or download).
(108.) See Online Shopping Bolsters Christmas Sales, BBC NEWS (Jan. 8, 2013), http://www.bbc.co.uk/ news/business-20932684 (describing the growth in online shopping).
(109.) Mark V.B. Partridge & Scott T. Lonardo, ICANN Can or Can It? Recent Developments in Internet Governance Involving Cybersquatting, Online Infringement, and Registration Practices, 1 LANDSLIDE 24, 2728 (2009); Dueker, supra note 58, at 488; see supra Part II.B.3 (describing cybersquatters and cybersquatting activities).
(110.) See generally Verizon Cal. Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088 (C.D. Cal. 2008) (finding that Navigation Catalyst Sys., Inc. engaged in cybersquatting).
(111.) Id. at 1092.
(115.) Verizon, 568 F. Supp. 2d at 1088.
(116.) This is mathematically true given the sheer number of possible domain names that can be created from the available alphanumeric characters. For example, assume a hypothetical system where domain names could only be one alphabetical letter in length. In this situation, there is a maximum of 26 total domain names because there are 26 letters in the alphabet. Now assume that the hypothetical DNS allows for names of either one or two letters in length. Under these constraints, there are up to 702 different combinations. This total is derived by multiplying the 26 possible first letters with the 26 possible second letters for a total of 676 possible two-letter combinations. Add to 676 the original 26 possibilities for one letter domain names to arrive at 702. The total number of possible letter combinations will grow exponentially as one increases the permitted length of the domain name.
(117.) See infra notes 118-23 and accompanying text (exploring the cost of defensively registering domain names using a hypothetical).
(118.) This number of possible variations is likely a conservative estimate given the number of infringing domain name variations identified in the Verizon case. Verizon, 568 F. Supp. 2d at 1092 (identifying 1392 domain names that are confusingly similar to Plaintiff's marks).
(119.) The $10.72 estimate is an average of the advertised cost for registering a ".com" domain name for one year with each of four major Internet registrars as of January 2013: GoDaddy.com ($9.99), Register.com ($12.95), Network Solutions ($9.99), and Yahoo Small Business ($9.95). Go Daddy Domain Name Search Tool, GoDaddy.com, http://www.godaddy.com/domains (last visited Mar. 12, 2013); Register Domain Names, Register.COM, http://www.register.com (last visited Mar. 12, 2013); Domain Name Registration Prices, Network Solutions, http://www.networksolutions.com/domain-name-registration/pricing-chart.jsp (last visited Mar. 12, 2013); Get a Domain Name with Yahoo! Domains, Yahoo! Small Bus., http://smallbusiness. yahoo.com/domains (last visited Mar. 12, 2013).
(120.) Twenty distinct marks x 100 variations x $10.72 = $21,440 to register all variations of all of this corporation's trademarks.
(121.) Just as the text accompanying supra note 116 describes all of the possible domain names in a single hypothetical gTLD, the number of possibilities would once again need to be multiplied by the number of operational gTLDs because each possible domain name may be repeated across each gTLD. For example, yahoo.com and yahoo.net or yahoo.org.
(122.) See Top Level Domains, supra note 4 (noting the difficulty in estimating the actual number of gTLD applications, and ultimately, the actual number of new gTLDs that ICANN will approve).
(123.) Calculating: 1930 applied-for gTLDs x 0.25 = 482.5; $21,440 x 482 potential gTLDs = $10,344,800.
(124.) Dominic Speller, Is Your Domain Name Management Strategy Financially Viable?, Intell. Asset Mag. (Dec./Jan. 2006), http://www.iam-magazine.com/issues/article.ashx?g=dbb582ae-e523-4e2b-a7b0-dd39a 562e3ac.
(125.) Module 1: Introduction, supra note 69, at 2-3, 21-22.
(126.) See generally Module 3: Objection Procedures, supra note 97 (providing ICANN's process for handling objections); Module 4: String Contention, supra note 97 (outlining ICANN's procedure for resolving string contentions).
(127.) See infra Part III.B.1 (explaining four types of available objections to a proposed gTLD).
(128.) See infra Part III.B.3 (addressing ICANN's systems for protecting online trademarks).
(129.) Module 3: Objection Procedures, supra note 97, at 4.
(130.) Id. at 4-5.
(131.) Id. at 6, 18-20.
(132.) Id. at 18. If the objector's right is a trademark right, the dispute resolution panel considers the following factors (and may consider others) in making its determination: (1) similarities in appearance, phonetic sound, or meaning between the marks; (2) the extent to which the objector's "rights in the mark [have] been bona fide"; (3) whether the public would associate the proposed gTLD with the objector's mark or a third-party mark; (4) whether the applicant had actual knowledge of the objector's mark; (5) the level of interference with the objector's rights in its mark; (6) the applicant's other intellectual property rights associated with the appliedfor gTLD; (7) whether the applicant is commonly known by the mark in the proposed gTLD; and (8) whether use of the gTLD "would create a likelihood of confusion." Id. at 19.
(133.) Module 3: Objection Procedures, supra note 97, at 4, 20-22.
(134.) Id. at 21-22.
(135.) Id. at 7-8.
(136.) Id. at 22-25; Module 1: Introduction, supra note 69, at 26.
(137.) Module 1: Introduction, supra note 69, at 27.
(138.) Module 3: Objection Procedures, supra note 97, at 22-23.
(139.) Id. at 5-6. A "string" is another term for a gTLD such as ".com" or ".net." Module 4: String Contention, supra note 97, at 2.
(140.) Module 4: String Contention, supra note 97, at 2.
(142.) See supra notes 131-38 and accompanying text (identifying the first three types of objections as the Legal Rights Objection, Limited Public Interest Objection, and Community Objection).
(143.) Module 4: String Contention, supra note 97, at 2-5.
(145.) Id. at 9-19.
(146.) Id. at 9-10.
(147.) "ICANN will not approve applications for proposed gTLD strings that are identical or that would result in user confusion, called contending strings.... [If this occurs,] such applications will proceed to contention resolution through either community priority evaluation, in certain cases, or through an auction." Id. at 2.
(148.) Module 4: String Contention, supra note 97, at 19-24.
(150.) See generally Module 3: Objection Procedures, supra note 97 (providing ICANN's process for handling objections); Module 4: String Contention, supra note 97 (outlining ICANN's procedure for resolving string contentions).
(151.) Module 3: Objection Procedures, supra note 97, at 22-25.
(152.) Id. at 23-25.
(153.) See Ngai Pindell, Is There Hope for HOPE VI? Community Economic Development and Localism, 35 Conn. L. Rev. 385, 411 (2003) (conceptualizing communities as decentralized, contestable, and fluid).
(154.) See What Is an Activist?, ActivistRights.org.au, http://www.activistrights.org.au/handbook/ ch01s02.php/ (last visited Mar. 12, 2013) (providing an inclusive and diverse definition of an "activist").
(155.) Tea Party Patriots, http://www.teapartypatriots.org/ (last visited Mar. 12, 2013); Occupy Wall Street, http://occupywallst.org/ (last visited Mar. 12, 2013).
(156.) Module 3: Objection Procedures, supra note 97, at 22-25.
(157.) See generally Trademark Clearinghouse, Internet Corp. for Assigned Names & Numbers (June 4, 2012), http://newgtlds.icann.org/en/applicants/agb/trademark-clearinghouse-04jun12-en.pdf (explaining the Trademark Clearinghouse and its functions and procedures).
(158.) Id. at 1.
(160.) Id. at 7-8.
(161.) Id. at 8.
(162.) See Trademark Clearinghouse, supra note 157, at 7-8 (providing first rights to registering a second-level domain name on a new gTLD during its pre-launch phase ahead of the general public and cybersquatters).
(163.) Id. at 6.
(165.) Id. at 6-7.
(166.) Id. at 7.
(167.) See infra Part IV.B.2 (expanding the scope of the Trademark Claims Service).
(168.) Mairead Moore, Cybersquatting: Prevention Better than Cure?, 17 Int'l J.L. & Info. Tech. 220, 229 (2008); see supra notes 36-38 and accompanying text (describing ccTLDs).
(169.) See Module 1: Introduction, supra note 69, at 15-16 (predicting an application timeline of 9 to 20 months).
(170.) See infra Part IV.B (expanding the scope of the Trademark Claims Service).
(171.) Infra Part IV.B.
(172.) Trademark Clearinghouse, supra note 157, at 7.
(174.) See id. (limiting reports of potentially infringing domain names to "identical matches" where "the domain name consists of the complete and identical textual elements of the mark").
(175.) Verizon Cal. Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088, 1092 (C.D. Cal. 2008).
(176.) See Trademark Clearinghouse, supra note 157, at 7 (defining an "identical match" as "(a) spaces contained within a mark that are either replaced by hyphens (and vice versa) or omitted; (b) only certain special characters contained within a trademark are spelled out with appropriate words describing it (@ and &); (c) punctuation or special characters contained within a mark that are unable to be used in a second-level domain name may either be (i) omitted or (ii) replaced by spaces, hyphens or underscores and still be considered identical matches; and (d) no plural and no 'marks contained' would qualify for inclusion"). The Verizon domain names would not qualify as an "identical match" under this definition. Id.
(177.) Id. at 7.
(178.) See infra Part IV.B (proposing the expansion of the scope of the Trademark Claims Service).
(179.) See supra Part III.B.1 (describing each of the four types of challenges available to third-party objectors).
(180.) Module 3: Objection Procedures, supra note 97, at 5, 7, 20-23; see supra notes 135-38 and accompanying text (setting forth the necessary elements for a Community objection).
(181.) Module 3: Objection Procedures, supra note 97, at 22-23.
(182.) Module 1: Introduction, supra note 69, at 26-27.
(183.) Id. at 26.
(184.) Module 3: Objection Procedures, supra note 97, at 22.
(185.) See supra Part III.A.2 (discussing the exponential growth of the cybersquatting problem with the addition of each new gTLD).
(186.) See supra Part III.B.4 (identifying the limited scope of the current Trademark Claims Service).
(187.) See supra notes 163-66 and accompanying text (reciting how the Trademark Claims Service functions).
(188.) Trademark Clearinghouse, supra note 157, at 6.
(190.) See id. at 7 (describing the notification process when there is an "identical match").
(191.) Id. at 7.
(192.) See Verizon Cal. Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088, 1092 (C.D. Cal. 2008) (giving "verisonbilling.com" as an example of an infringing domain name).
(193.) See supra Part III.A.2 (providing examples of infringing domain names in the Verizon case).
Wei-erh Chen J.D. Candidate, University of Iowa College of Law, 2013; M.T.S., Vanderbilt University Divinity School, 2010; B.A., University of Northern Iowa, 2007. I want to thank Emily Roxberg Davis and The Journal of Corporation Law's Volume 38 Editorial Board for helping me develop this Note. I am forever grateful to all my teachers and professors who have made me a better writer, especially Jerome Soneson, Ken McCormick, John J. Thatamanil, C. Melissa Snarr, Kathleen Flake, and Victor Judge. Finally, I must thank the two most important women in my life: my mother Angie for having the faith to move us to the other side of the world for the chance at a better life, and my wife Kassidy for embodying that better life as my steadfast partner and lifelong friend.
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|Publication:||The Journal of Corporation Law|
|Date:||Mar 22, 2013|
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