Adapting to the new world of non-Latin domain names

Are we seeing the beginning of a new era of internationalised domain names? Emily Taylor, an internet specialist lawyer and consultant, examines the introduction of the first generic Top-Level Domains (gTLDs) to the internet’s root zone.

Now that applications for new gTLDs have closed, what are the next steps that an applicant for a gTLD will need to go through?

The gTLD application process has been such an ordeal in itself that getting through it feels like you've reached the finish line--unfortunately, you're actually just approaching the starting line.

It is now time to operationalise all the promises made in your application, and consider any public interest commitments made in the application process.

Many, but not all, applicants have outsourced the registry function to third parties and those that haven't tend to come from robust technical operations. For a minority, however, it's time to fire up the engine room on the technical and operational side.

For all, the most pressing deadline is the launch. This means asking a number of questions:

  • Are all the aspects of your sunrise period in place?
  • Are you conducting tests to ensure that the output from the trademark clearinghouse (signed marked data (SMD) files) contains the data you require to implement sunrise applications?
  • Have you got your policy for sunrise dispute resolution and a provider in place?
  • Are you offering any supplementary rights protection mechanisms? If so, are the policy, rules and providers in place? Have you thought about how to handle disputes or contention?
  • How are you going to handle Governmental Advisory Committee (GAC) safeguard advice?
  • Did you make public interest commitments or otherwise enhance the promises you made in your original application? If so, check what you have committed to do, and put measures in place
  • If you have registration eligibility criteria, have you produced your written registration policies, and thought through how to handle disputes or queries arising from the eligibility criteria?
  • How do you plan to handle policy development on an ongoing basis? Do you have policy development processes suited to your top-level domains (TLD) mission and environment?
  • Have you got experienced staff in place to handle the start-up phase through to steady state?

Why have only four gTLDs been delegated so far?

The Internet Corporation for Assigned Names and Numbers (ICANN) new gTLD process is complex. The guidebook runs to hundreds of pages, and provides for numerous evaluations, extended evaluations and objection processes. Only having run the course of the evaluation process will a string be ready to be entered into the root zone, and begin delegation testing.

Each of the 1,930 applications have been through six initial evaluation processes:

  • string similarity
  • geographic names
  • DNS stability
  • technical and operational capability
  • financial capability
  • registry services

The results of these were announced in March 2013, less than a year after applications closed. There have been many twists and turns along the way. Governments issued early warnings against hundreds of applications, and produced GAC Safeguard Advice which affected every application.

Many applications are still going through extended evaluation, formal objections (eg legal rights, string objection), and we have yet to see the outcome of any community priority processes.

Delegation itself (ie ICANN putting the strings in the root) is now being carried out according to priority numbers.

What are the first four gTLDs and what makes them unique?

The first four gTLDs are set out below.

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They have some of the highest priority numbers assigned by ICANN, and have come through the application process fairly unscathed by objections etc.

What is ICANN hoping to encourage with the introduction of non-Latin gTLDs?

Non-Latin domain names are called Internationalised Domain Names (IDNs). IDNs have been available on the market for over a decade, and at the top level in country codes since 2009. For many observers, non-Latin gTLDs are the most likely to fulfil currently unmet needs in the market. For example, 80% of the Chinese population are unable to read Latin script. Although there is a strong link between IDNs and local language content, only 2% of the worlds registered domain names are IDNs (5m out of 250m), so there is quite clearly an enormous untapped potential. This is partly because using IDNs is so difficult--none of the major email providers support fully internationalised addresses, and none of the world's most popular websites allow user accounts to be created with IDN email addresses. The mobile environment has even poorer IDN support than desktops. For a fuller explanation, see the 2013 World Report on IDN Deployment.

At this year's Internet Governance Forum, major vendors such as Google were challenged on their poor support for IDNs. Google representatives acknowledged that it's far from optimal, as applicants for IDN new gTLDs, that IDNs do not work in their platforms or devices. It is likely the launch of more than 100 IDN strings in the first wave of new gTLD deployment may motivate large providers to update their software and hardware. This could transform the user experience, and pave the way for mass adoption.

Domain name speculators are already starting to consider IDNs as potentially a new frontier.

Should I have filed my registered marks with the Trademark Clearinghouse by now?

Yes, but it's not too late to do it now.

Bear in mind that registration in the Trademark Clearinghouse will not block registrations of your mark by third parties, nor will it cover confusingly similar strings. For that you will need a watching service. You should also look at what enhanced rights protection packages are on the market from individual registries. For example, Donuts, the registry for one of the first new gTLDs which has applied for over 300 strings, is offering a service called Domains Protected Marks List (DPML), where for a single fee a trademark holder can block domain names that are identical to the mark, and those which contain the mark.

Is there anything I can do if somebody else registers a domain name containing my trade mark in one of the new gTLDs?

As well as preventative measures such as sunrise applications, there are a host of dispute resolution mechanisms.

The Trademark Clearinghouse has launched processes to resolve conflicts arising from its own service. Every new gTLD registry is also required to provide a sunrise dispute resolution process.

The Uniform Rapid Suspension System (URS) is designed to provide rapid suspension of domain names which are registered in bad faith. It is set up to be low cost and rapid, but is procedurally quite complex. It remains to be seen how popular it will prove in practice.

The well-known Uniform Domain-Name Dispute-Resolution Policy (UDRP) will cover all new gTLDs.

With potentially thousands of new gTLDs being released (over time), will this make it more difficult for trade mark owners to protect their IP rights?

Trademark holders will certainly have to review their approach to online brand protection. Unless you want to manage enormous portfolios of domain names that are not of use to your business except as defensive registrations, you will need to develop a more strategic approach--for example, one that registers in top-level domains which are relevant to your business, and uses dispute mechanisms for third party use that is causing actual harm. You need to consider what is right for your business, and for your budget.

Emily Taylor (www.emilytaylor.eu) is an Internet specialist lawyer and well known in the internet governance circles. Emily is lead author of the EURid UNESCO World Report on IDN Deployment, and was part of the new gTLD string similarity and geographic names evaluation panels for InterConnect Communications. Her company, Synetergy, has been appointed sunrise dispute resolution provider for a number of new gTLDs. Emily is a director of Oxford Information Labs Ltd, which provides domain name watching services.

This post was originally published in Lexis®PSL IP&IT on 28 October 2013.

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