The Internet Corporation for Assigned Names and Numbers (ICANN) is the body that, among other things, administers the domain name system with respect to generic top-level domains (gTLDs) –– that is, the string of characters to the right of the “dot.” While constituted as a technical, administrative body, ICANN soon found itself embroiled in intellectual property policy concerns about who had rights to which domain names. The challenges for ICANN increased exponentially when it released its new gTLD program. The first round of applications for new gTLDs took place in 2012, and applications are still being processed. With the second round of applications forthcoming, this paper looks back at some of the lessons learned from the first round with respect to trademarks, domain names and freedom of expression.
In particular, it focuses on:
- the history and policy behind the new gTLD program;
- the lessons learned from domain name disputes in second-level domains prior to the advent of the new program;
- the use of pejorative term such as “sucks” in domain names generally, and with respect to new gTLDs in particular, and the guidelines that have been developed through Uniform Domain Name Dispute Resolution Policy (UDRP) arbitrations for balancing free speech and proprietary trademark interests within such domain spaces;
- the treatment of “generic” versus “proprietary” new gTLDs in terms of balancing free speech and other interests against proprietary trademark interests;
- the treatment of “closed” versus “open” domain spaces under the new gTLD process; and
- the treatment of geographically significant terms incorporated into new gTLDs.
The paper concludes with some reflections on what has been learned from both traditional second-level domain name disputes and oppositions to new gTLD applications, with the expectation that these lessons can be carried forward into future application processes for new gTLDs.