Last month registration opened for web addresses using the new generic top-level domain (gTLD) .nyc, and more than 50,000 domain names have been registered, making it the most prolific city-based gTLD after .berlin. In fact, someone has already registered and redirected the domain to a satirical law school website. Other New Yorkers have taken the opportunity to vent their frustrations, registering and directing it to a video lampooning the city’s appointment of Taylor Swift as its “Global Ambassador.” While these may be examples of harmless fun, the potential for less benign uses is obvious. Legal counsel for former Mayor Bloomberg certainly realized as much, as they defensively registered 400 new .nyc domain names on his behalf, running the gauntlet from expected choices to more surprising acquisitions like
The creation of .nyc is merely one small part of a staggering expansion of available gTLDs put in motion by the Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit corporation that controls the Internet’s Domain Name System (DNS) and stands as the effective source of Internet governance. For an evaluation fee of $185,000 and additional operating costs, anyone can apply with ICANN to create a new gTLD and then offer registration of domain names in the new gTLD to others. Some have criticized this endeavor as merely a moneymaking scheme for ICANN, speculating that most of the new gTLDs created will not be popular enough to turn a profit for their creators through domain name registrations after the hefty required payout to ICANN.
With over 1,400 new gTLDs approved by ICANN for introduction over the next several years, the challenge of protecting intellectual property rights like trademarks from use in infringing domain names will become exponentially more complex. The process for resolving disputes over domain name ownership involving intellectual property rights is ICANN’s Uniform Dispute Resolution Policy (UDRP)—a necessity due to the frequently international nature of such disputes. Under the UDRP, a party who seeks to gain control over an existing domain name registered in violation of a standing claim to trademark or intellectual property rights can choose from one of several venues offered by ICANN through which they are able to engage in a binding arbitration process under guidelines defined by ICANN. Whenever a domain name is registered with ICANN, the registering party signs a contract including the stipulation that the UDRP be used to settle any future disputes that may arise over the domain name.
In his paper “International Dispute Settlement at the Trademark-Domain Name Interface,” Duke Law School Professor Laurence Helfer distills four principal virtues embodied in the UDRP: “it is simple, cheap, quick, and easily accessible by parties located anywhere in the world.” Pleadings are usually filed digitally and the final cost of proceedings usually averages between $750 and $2,500 per domain name. Most decisions are published online within forty-five days of the initial complaint being filed. The problem is that those costs can now easily scale exponentially. With over a thousand new gTLDs becoming available and each one offering the potential for countless new infringing domain names, the cost for enforcing IP rights could quickly become unmanageable for anyone other than gargantuan corporations. And beyond mere cost is the problem of actually finding infringing domain names, now that the list of gTLDs is growing so vast.
In response to this concern, ICANN is launching the Trademark Clearinghouse, a centralized database for trademarks, which will notify trademark owners who have registered with the system of any infringing domain names that are registered across all the gTLDs going forward, as well as giving owners the first chance to register domain names with their trademarks during an early “sunrise period” for all new gTLDs. However, critics have already taken issue with the fact that the Clearinghouse will only notify owners when there are exact matches to their trademarks in new domain names, requiring separate registration and fees for any permutations of a trademark that an owner also wants to protect. And this service does not come free, but rather at a cost of up to $150 dollars per trademark per year. While this stands to be a less costly option than having to file and win individual UDRP claims for each domain name that a trademark owner wants and would not have been able to register without the sunrise period, the cost is not insignificant and can easily add up for large trademark portfolios. And unless the owner takes the “Mayor Bloomberg approach” and registers every conceivable, bothersome domain name up front, they may still need to pay for UDRP cases down the line.
The gTLD expansion seems like it will be a double-edged sword when it comes to combating cyber-squatters—people who register domain names they predict will be desirable with the intent to resell them for a profit. While all the new gTLDs will offer many new opportunities for cyber-squatters to make a profit, it will also offer more opportunities to circumvent them by devaluing the worth of any single domain name, since it can likely always be registered on another gTLD.
One would hope the liberalization of gTLDs will lead to a more helpfully organized internet by breaking websites out from the .com / .edu / .org / .net standards of old, into new, more content-specific labeling systems. However, acceptance of such alternative gTLDs is far from certain, as shown by the reluctance of pornographic and “adult” websites to make use of the .xxx TLD made available a few years ago. Right now, no one seems enthusiastic to abandon the traditional .com ingrained in Internet culture, even though many .com websites are far from commercial in nature. It may be that the only way to get site owners to migrate to new, content-specific gTLDs is through new legal incentives.
Ultimately, more podiums means more speakers on the Internet’s stage, for better or worse. Those critical of the intellectual property system’s grip on language use itself will likely view the increased access to domain names as a welcome opportunity to take language back from corporations and opportunistic cyber-squatters. It’s a matter of balancing the interests of free speech, expression, and innovation against new potentials for abuse, fraud, harassment, and infringement. Whether being able to register essentially anything as a domain name will be a boon to Internet innovation, a colossal headache for intellectual property owners, or both, remains to be seen. But internet culture will have fun with it either way.
David J. Cottrell is a J.D. Candidate, ’16, at NYU School of Law. ]]>