The New gTLDs and the Resolution of Trade Mark Disputes

• Jurisdiction: South Africa
• Date: 16 August 2019
• Published date: 16 August 2019
• Pages: 408-424
• Author: S Karjiker

408

THE NEW gTLDS AND THE RESOLUTION OF

TRADE MARK DISPUTES

S Karjiker

BSc LLB LLM LLD

Senior Lecturer in Intellectual Property Law, Department of Mercantile Law,

Stellenbosch University

1 Introduction

Following the birth of the World Wide Web (or simply the “Web”),1 trade

mark issues relating to the registration of domain names were the rst signicant

concern for trade m ark owners, and the principal area of inte rest in the related

area of information tech nology law.2 What was particularly interesting

concerning t he disputes related to abusive domain name registrations was t he

alternate dispute r esolution mechanism which was developed (and which will

briey be discussed below), in a relatively short period of time, to address the

opportun istic or predatory practices which arose, and which mechanism has

proven to be remarkably effective.

As was relatively recently reported i n the press, the Inter net Corporation

for Assigned Names and Numbers (“ICANN”) announced four new top-

level domains: the Arabic word for “web”; the Chi nese word for “game”; and

the Russian words for “online” and “web site”.3 Since then, the following

additional new top-level domains have been approved for, amongst others,

.london,4 .clothing, .singles and .gur u.5 Closer to home, there have been

registrations for .africa, .capetown, .durban and .joburg.6 This development

is a consequence of ICANN’s decision in June 2011 to permit new top-level

domains, including both new ASCII, and internat ionalised domain name

1 Although the t erms “Inter net” and “Web” are often u sed interchange ably, it is worth noting that t hey are

not the same th ing The Internet is th e infrastru cture on which every thing runs, w hereas the Web is the

result of a highe r level protocol (the Hypertext Tra nsfer Protocol (“HTTP ”)), which uses the Internet ’s

foundationa l TCP/IP protocol; it is, thus, a speci fic application of the network es tablished by the Inter net

Using the railway s ystem as an analog y, the Internet is t he tracks and sig nalling equip ment, which allows

a range of differ ent traffic to be t ransported, su ch as the Web A Mu rray Information Tech nology Law:

The Law and So ciety (2010) 31-32; J Naughton What You Really Need to Kn ow About the Internet: Fr om

Gutenberg to Zuckerberg (2012) 4 and 39-40

2 L Edwards & C Waelde Law a nd the Internet 3 ed (2009) 312; E Hurter “Not the Lesser Evil: Ame nding

the Regulat ions for the Resolution of Domain Name D isputes in the ‘ za’ Domain to Combat Reverse

Domain Name Hija cking” (2012) 24 SA Merc LJ 416 416

3 Anonymous “I nternet Dom ain Name Expan sion Now Underway” (23 -10-2013) ICANN

icann org/en/news/press/releases/release-23oct13-en> (accessed 23-10-2013)

4 Anonymous “ UK Capital Get s london Domai n” (15-11-2013) News 24 news24 com/

Technology/News/UK-cap ital-gets-london-doma in-20131115#> (accessed 23-11-2013)

5 Anonymous “ Net Names bike and guru Availa ble” (26-11-2013) BBC w bbc couk /news/

tec hnolo gy-2510 5438> (a cces sed 26 -11-2013)

6 N Mawson “Onerou s Liabilities Loom for africa” (17-14-2014) IT Web

php?option=com_conten t&view=ar ticle&id=120331:Onerous-liabilities-loom-for-af rica&catid=14> 7

(accessed 21-05-2014)

(2014) 25 Stell LR 408

© Juta and Company (Pty) Ltd

(“IDN” ),7 top-level domains (the “New gTLD Program”).8 However, the

expansion of the top-level domains is not restr icted to geographical names

or generic terms; applicat ion can be made to regist er trade marks as top-level

domains. The New gTLD Program is li kely to lead to an explosion in the

number of top-level domains (“TLD”s),9 and, at the time it was approved,

it was anticipated that it would lead to a new raft of trade mark disputes

which would have to be addressed. This has already proven to be the case.

The application period for the r st round of new TLDs opened on 12 January

2012, and closed on 30 May 2012,10 during which ti me ICANN received 1,930

applications for new TLDs.11 There were 751 objections which were initially

led and which, therefore, potentially ne eded to be resolved.12

This article will indicate why it was considered necessary to introduce

a new dispute resolution mechanism to deal with the envisaged disputes,

explain the mechanism which was i ntroduced, and highlight some of the legal

issues which have emerged from the determi nations relating to the rst round

of applications under the New gTLD Program, a nd provide further detail into

how the mechanism works. The focus of this a rticle will be on the resolution

of conict s based on trade mark rights, such as where t wo parties have the

same (or similar) trade marks, a nd where one, or both, of such trade mark

proprietors seeks registration of a new TLD incorporating the trade mark.

This article will not consider other possible issues related to the New gTLD

Program, such as the i mplications relating to freedom of expression, or the

registration of personal n ames or geographical indicators as domain na mes. It

will also not be concer ned with the merits of ICANN’s decision to approve the

New gTLD Program, which has been cr iticised as a cynical attempt to make

money, resulting in the unnec essary waste of social and nancial resource s.13

An analysis of the new dispute resolution system should be of interest

not only to trade mark specialists, but should also serve to illustrate how

effective alternative dispute resolution mechanisms can be designed to

resolve sp ecic types of forese eable conicts. From a trade mark lawyer’s

perspective it is a timely junct ure, now that the determinations relating to

7 ASCII domain n ames are those whic h are based on the Lati n script, and int ernationalis ed domain names

(IDNs) are domai n names which consist of non- Latin scripts (for example , Arabic Chinese, or C yrillic)

Therefore, ICAN N will now allow doma in names in lang uages other tha n those based on th e Latin script

See Anonymou s “Internatio nalized Domai n Names” (2013) ICANN

idns > (acc essed 03-10-2 013)

8 Anonymous “About the P rogram” (2013) ICANN ican n org/en/about/program>

(acce ssed 0 3-10-2013)

9 The new top-level d omains are mor e commonly refer red to as “gTLDs” but “TLD” is fact ually more

correct As will b ecome clear, the new top-level dom ains are no longer necessa rily generic – which is

what the “g” in gTLD den otes – but may consist of a t rade mark A lso, technical ly the application is m ade

for a “gTLD string”

10 S 1 11 of the ICA NN gTLD Applicant G uidebook (Version 2011-09-19) (2011) The period for subm itting

applications wa s extended from 29 March 2012 due to t echnical problems expe rienced with the onli ne

system (see Anony mous “TAS Interrupt ion - Update” (21-05-2012) ICANN

en/announcements-and-media /announcement-21may12-en> (accessed 04-10- 2013))

11 Anonymou s “About the Program” ICAN N

12 Anonymous “ Program St atistics” (2013) ICANN

(acce ssed 0 4-10-2 013)

13 See, for example, E D yson “What’s in a Domain Name?” (25 -08-2011) Project Syn dicate

project-syndicate org/print/what-s-in-a- domain-name-> (accessed 04-10-2013)

THE NEW gTLDS 409

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