Optimizing online trademark protections given the proliferation of generic top level domains.

• Author: Chen, Wei-erh

1. 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 I. Introduction

   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.

2. Background

   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)

   1. 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: 192.0.34.60. (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 74.125.225.85 (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:

      Johnny Chen

      123 Fake Street

      Springfield, Iowa 52240

      U.S.A. (28)

      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.

   2. 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)...