June 2014 – During the ICANN50 in London, a surprising statement was made. It was announced that released domain names from the Name Collision list would not be subject to a Sunrise period, therefore depriving trademark owners from the possibility to defend their rights.
A name collision occurs when users unknowingly access a name that has been delegated in the public domain name when the user’s intent was to access a resource identified by the same name in a private network such as an intranet. It creates a risk of mass confusion for users and machines, hence their registration is prohibited.
Collision list names should not be confused with Reserved Names, which are an imposed list of names to be excluded from new gTLD registrations. “These reserved names include strings that are for Country Code Top Level Domains (ccTLDs), ICANN-related names (such as ICANN), IANA-related names (such as example), and names that the registry operator can use in connection with the operation of the TLD” says ICANN. The rules regarding these names’ release have already been discussed and ratified. Indeed, they are subject to Sunrise only if it is still running, otherwise the only remedy will be a claims notice.
The absence of sunrise period can be seen as a loophole to the rights protection mechanisms (RPM), which enable trademark holders to protect their rights during the new gTLD program. Sunrise provides for trademark holders a possibility to preregister names that are the same or similar to their trademarks in order to avoid cybersquatting. This special period takes place prior to the general launch and the IPR owner must be able to prove their prior right to the name to register the TLD.
As a defense to the lack of RPM without the Sunrise period, it was contended that the URS procedure is an adequate protection. However, many practitioners claim that these actions aren’t as efficient to protect IPRs as Sunrise periods, thus explaining the low number of IPR owners resorting to URS procedures.
Because many consider URS actions not to be sufficient, protests can be expected regarding ICANN’s decision not to submit released collision list names to Sunrise, however the outcome remains uncertain.
Dreyfus attends ICANN meetings in order to keep you closely informed of the coming changes.