Impact of introducing the new generic top level domain (new gTLD)

About the New gTLD

A top level domain refers to an internet domain name at the highest level (the right-most label in the domain name space).  Up until now, a top level domain consisted of 250 national top level domains (“nTLD”), such as “kr” (Korea) and “jp” (Japan) and 23 generic top level domains (“gTLD”) such as “com”, “net” and “info”.  Under the newly introduced new generic top level domains (“new gTLD”), a generic top level domain can be named after a region, company or organization besides the existing 23 gTLDs.

Benefits of Introducing the New gTLD

The new gTLD allows companies and organizations to register a top level domain with their names and use such domain globally, thereby dispensing with the need for registering a new domain.  Also, since a company may use its trademark or brand as a gTLD, it can manage its brand in a more stable and comprehensive manner under a single designated domain.  For instance, under the existing domain name system, third parties may be prevented from registering similar domains by preemptive registration of such similar domains (e.g., hwawoo.net, hwawoo.org and hwawoo.info) in addition to the original domain (e.g., hwawoo.com).  In contrast, under the new gTLD, comprehensive management is possible by using a top level domain (e.g., “.hwawoo”).  Furthermore, because a top level domain may be named after a trademark, the source of the goods and services can easily be identified, which results in decreasing consumer’s confusion and enhancing the trust of the web user.  Furthermore, once an applicant has executed a contract with the Internet Corporation for Assigned Names and Numbers (“ICANN”) through the registry for the new gTLD, such applicant can manage all second level domains that are combined with the new gTLD as a registry operator and earn profits by selling such second level domains.  

Registration Procedures for the New gTLD and Important Follow-Up Procedures

The registration procedures for the new gTLD proceeds in the following order: filing an application for the new gTLD, conducting a background check and initial evaluation, raising of objections and string contention, final approval and executing contract, and delegation. An application must be made for the new gTLD through the ICANN and, an applicant must be a company, association or organization whose existence can be verified at the time of the application while having policies, technologies, application fees and sufficient funds for constructing systems necessary for operating the new gTLD.  After completing the registration procedures for the new gTLD, such registry may proceed with registration for second level domains and, in regards to such procedures, sunrise services and trademark claims services are particularly noteworthy.  Specifically, sunrise services gives priority to a trademark owner over the general public to register a second level domain with its trademark and a registry is obliged to provide at least a 30-day sunrise period.  A trademark owner seeking to obtain such priority must submit its trademark information to the Trademark Clearinghouse (“TMCH”) and verify its trademark in advance.  The TMCH is the centralized database that verifies, stores and manages trademark information collected from trademark owners across the world for purposes of protecting the rights of good-faith trademark owners under the new gTLD programs.  Registration with the TMCH does not create or verify any new rights, but, rather, it must be based on existing trademarks that are already valid in a certain country or region.  Trademark claims services are mandatory notification services that a registry must provide for no less than 90 days following the sunrise period (when registration for second level domains becomes available to the general public).  Under trade claim services, a registrant will be notified if a domain name matches a registered trademark and receive the relevant trademark information with guidance that trademarks registered in the TMCH’s database are accessible for free.  In the event that a registrant continues to register such domain name, a trademark owner will receive notification of the domain name registration.

Disputes Regarding the New gTLD

The ICANN received a total of 1,930 new gTLD applications, including 36 Fortune 100 companies, for five months beginning in January 12, 2012, among which 230 applications are in contention since multiple applicants made claims for the same gTLD registration.  The most popular string is ‘.app,’ followed by ‘.home’ and ‘.inc.’  Since a number of new gTLD applications are fiercely in contention at the stage of objections and string contention, disputes appear to abound even from the registration stage.

In order to prevent potential infringement of the stakeholder’s rights in the course of creating a new gTLD, the ICANN provides mechanisms to protect rights, such as rights to claims rights through objections during the registration procedures from the application evaluation stage to the post-delegation stage of gTLD registry operators, objections through the Dispute Resolution Service Provider (“DRSP”), protection of trademarks and Uniform Rapid Suspension (“URS”).  Therefore, active preparation would be needed based on such  mechanisms.