Dreyfus

The program of new generic strings known as New gTLDs (New Generic Top Level Domain Names), such as <.PARIS>, <.BOOKS>, <.SHOP>, <.LOVE> and several hundred others, has entered its final phase. However, the risk of domain name collisions, taken very seriously by ICANN, is delaying the activation of these new strings awaited with such anticipation by Internet users and rights holders alike. The management of these risks is imposing new constraints on the reservation of second level domains and de facto forcing changes to the reservation of domain names in the new strings.

Reminder

A domain name comprises a radical and a suffix, which is also known as a string. The suffix is the top level domain name (TLD) and the radical is the second level domain name (SLD).

Example : dreyfus.fr -> level2.level1 -> SLD.TLD

What is domain name collision?

Name Collision is a problem of nomenclature that could occur in the domain name system (DNS), between the new strings and those used in a private domain name system. In reality, these names are used in different protocols on the Internet and may give rise to confusion. An Internet enquiry could thereby be directed to a non-designated site.

The risks

• Enquiries aimed at resources in private networks end up searching the public DNS and thereby “collide” with the newly delegated gTLDs, and vice versa.
• A firm’s e-mail system could transfer mails to the wrong server.
• Internet users could be directed to the wrong Internet site.
• Internet users could conclude that the requested website does not exist.

The challenge

What is at stake regarding Name Collision is nothing less than public confidence in the DNS system and the Internet itself.

ICANN’s position

Taking very seriously the risks that could be caused by name collisions, ICANN asked IAS Global Advisors LLC to carry out a study to analyze the risks relating to each future domain name, both at top level (gTLD) and also second level (SLD)..

The methodology of the risk analysis

On August 5 2013, ICANN published a study on Name Collisions (link:  http://www.icann.org/en/about/staff/security/ssr/name-collision-02aug13-en.pdf). This study evaluated string categories according to data observed in the DNS root servers.

It is worth remembering that the DNS root servers are the thirteen root servers of the Internet’s Domain Name System that come under the authority of ICANN. They respond to requests concerning top level domain names (TLDs) and redirect them towards the DNS server of the relevant top level. The root server data were collected on the “Day in the life of the internet” (DITL), an initiative run by the Domain Name System Operations Analysis and Research Center alias DNS-OARC).

The study analyzed two types of data:

• Samples of DNS requests transferred to root servers
• Information coming from certification authorities concerning the delivery of certificates for internal names (for example: TLS/SSL certificates for non-delegated names).

Based on this study ICANN was able to take measures that aimed to reduce the risk of name collision. These measures affect both first level and second level domains.

Name Collision & generic top level domains (gTLDs)

Risk classification : L’étude sur la collision des noms identifie trois catégories d’extension en fonction de leurs risques potentiels de collision dans l’espace de noms.

• High Risk: only 2 strings (<.home> and <.corp>), the most widely used in Company networks, were classed as “High” risk.
• Indeterminate Risk: in 20% of applied-for strings (ex: <.cba>), the risk of name collision is undefined.
• Low risk: 80% of applied-for strings represent a low risk of name collision. In general, the longer and more descriptive the gTLD, the lower the risk. A minimum of 4 letters represents adequate security in the majority of cases.

Measures taken to reduce risks:

• High Risk: No delegation of <.corp> and <.home>.
• Indeterminate Risk: Carry out more detailed studies knowing that they could take from 3 to 6 months (ex: <.cba>)
• Low risk: It is possible to delegate strings belonging to this category. However, a waiting period of at least 120 days from signing the delegation contract must be respected before being able to activate the first domain names at the second level (SLD) in the DNS.

Name Collision & second level domains (SLDs)

In order to activate second level domain names (SLDs), the registry operators of new strings must first receive their Collision Occurrence Assessment. According to the results of this evaluation, personalized risk-reduction measures to avoid collision will be required of registry operators for each new gTLD. These measures can include:

• The indefinite block of second level domain names (SLDs)
• The temporary block of second level domain names (SLDs)
• The creation of a delegation trial using any format
• Making the SLD valid for the single entity causing the name collision
• Any other risk-reducing measures that may be identified during the evaluation or by any further studies

The specific context for the management of the consequences of the collision-risk evaluation has not yet been defined. ICANN hopes to finalize this before the end of March 2014.  As a result, the activation of SLDs has yet to be tabled.

However, if the activation of SLDs for new gTLDs still requires patience, the same is not true of their delegation.  On November 17 2013, ICANN published its report on the “APDs” or “Alternate Path to Delegation Reports” ;  http://newgtlds.icann.org/en/announcements-and-media/announcement-2-17nov13-en).

• Two lists of TLDs :

– Eligible for the APD.
– Ineligible for the APD.

• If the New gTLDs are eligible, the operators of these registers will be able to delegate the SLDs before the name collision risk is evaluated. However, they must block all the domain names designated by ICANN (for example: <.PARIS> a list of approximately 18,000 SLDs including <disneyland>, <hermes>, <diesel>, <louisvuitton>, etc…).

• If they are not eligible, the operators of these new registers will not be able to delegate the SLDs before doing an in-depth evaluation. Since the final framework for this evaluation has not yet been determined, the 25 ineligible new gTLDs will have longer to wait. The TLDs involved are the following: .blog, .box, .business, .casa, .cisco, .comcast, .dev, .family, .free, .google, .iinet, .mail, .network, .office, .orange, .philips, .prod, .sfr, .site, .taobao, .taxi, .web, .work, .world, .zip .

As a result, it is now vital for rights holders to check the reservation possibilities for their second level domain names in relation to each new string.

We can offer you a personalized study according to the strategy defined for the reservation of domain names in the new strings.

The 13th edition of the ‘Trophées du Droit’ (legal industry awards) was held on 28 November in an award ceremony for the best legal firms which gathered over 950 figures involved in the legal profession(1)(2).

Dreyfus was recognized this year in the category Management of legal firms and received the Special Mention:Trademark Attorney : trademarks(3).

In previous years, the firm had already been awarded a Silver Trophy in the same category of Trademark Attorney but was also recognized for its performance as an emerging team of specialists.

We would like to thank our clients for their support without which we would not have received this special award.

                                                                     
(1)    Press release available here.
(2)    Laureates list : http://www.tropheesdudroit.fr/laureats-2-aa3-1
(2)    http://business.lesechos.fr/directions-financieres/enjeux/0203155708234-les-meilleurs-cabinets-d-affaires-a-l-honneur-57420.php

In October 2013, Nathalie Dreyfus was interviewed by James Nurton, editor of Managing Intellectual Property on the issue of the new gTLDs, recent developments in France and the start of her law firm.

With the current wave of new gTLDs that have recently been launched, Nathalie points out that these new strings are a “revolution on the Internet”, particularly because they now convey meaning. She illustrates the point by citing a recent UDRP case which examined whether to take the string into consideration when comparing similarities between the trademark and the name. Nathalie added that the Trademark Clearinghouse “can also be a good thing” in the sense that rights holders can more easily warn offenders in the case of litigation over names,  and also benefit from this service by using Donuts’ Domains Protected Marks List (DPML). In this way they control the reservation of domain names identical to their trademarks.

Concerning recent developments in France, Nathalie points out that since 2011, cases have been heard and examined more rapidly by the courts, but that there are “fewer oral pleadings and fewer specialist judges for Intellectual Property”. Cases are also judged “on their own merits, which is very favourable for trademark owners”.

Nathalie completes her observations by highlighting the fact that since the offices of the INPI were relocated outside Paris, an online service for trademark renewal would be a welcome addition in 2014 since specific trips have to be made to these offices and there is no postal address anywhere in the capital.

Nathalie then outlined the reasons for starting her law firm. Ten years ago she noticed that many Companies were concerned by the protection of their trademarks “in countries where they didn’t even have a business” whereas, in the case of their domain names, these were visible right around the world.  Growing ever since, the firm now employs over 15 people and created a platform entitled Dreyfus IPweb to “consolidate and summarize all the information available to [her] clients”.

Nathalie Dreyfus finished the interview by stating that “domain names are becoming as important as trademarks” but that they will never replace them since the Law requires that a trademark be registered if rights are to be defended on the Internet, not only with domain names but also on social networks. Trademarks are “tools for actions – the king of the distinctive sign”.

The full interview (in English) is available here.

شبكة . (.SHABAKA)

The Sunrise phase for شبكة. (.SHABAKA), the generic term for “the Internet”, is still in progress. Domain names under this new gTLD are available in Arabic script only.

As a reminder, the different phases are as followed:

• Sunrise period : from 31 October to 29 December 2013,
• Landrush period : from 2 to 31 January 2014, and
• General Availability (on First-Come, First-Serve basis) : from 4 February 2014.

To participate in the Sunrise phase, it is mandatory to have a registered trademark in the Trademark Clearinghouse (TMCH) and corresponding SMD files.

Donuts Sunrises

Donuts Inc program was partly known. It is now confirmed that 7 new gTLDs will be added to the first 7 already announced for the Sunrise. The different phases of the program are as followed:

• Sunrises :

– Sunrise from 26 November 2013 to 24 January 2014 : the new gTLDs offered will be .BIKE, .CLOTHING, .GURU, .HOLDINGS, .PLUMBING, .SINGLES and .VENTURES

– Sunrise from 3 December 2013 to 31 January 2014 : the new gTLDs available will be .CAMERA, .EQUIPMENT, .ESTATE, .GALLERY, .GRAPHICS, .LIGHTING and .PHOTOGRAPHY .

• Early Access Program :

From 29 January to 4 February 2014, new gTLDs will be available on a “First-Come, First-Serve” basis. EAP application fees will vary in price according to the day of the week. It will not be possible to register Premium names.

• General Availability :

From 5 February or 12 February 2014 (depending on the starting date of the Sunrise), names will be available to everyone on a “First-Come, First-Serve” basis.

.XYZ and .COLLEGE : Pre-Sunrise Premium names auction

Auction sales announced by Namejet and XYZ.COM registry for 40 domain names including new gTLDs .XYZ and .COLLEGE are still in progress since their launch on 6 November, and will be closed from 22 November 2013 (for names such as LOANS.COLLEGE or LONDON.XYZ) to 28 February 2014 (for UNDERGRAD.COLLEGE or SCHOLARSHIPS.COLLEGE). The highest bidders will take possession of the domains when they become available after the Sunrise period in 2014.

A full list of domains available under auction can be found at : http://www.namejet.com/featuredauctions/xyz

Minds + Machines launches priority reservations for .BEST, .CASA, .CEO, .COOKING and .HORSE

Minds + Machines announced a Priority Reservation program. It is possible to make a domain name reservation under new gTLDs .BEST, .CASA, .CEO, .COOKING and .HORSE before they are available during the General Availability period.

However, names registered during the Sunrise period are still priority. Names subjected to priority reservations corresponding to registered names in the Sunrise period will be refunded.

Registration prices will depend on the chosen domain name.

The Chilean registry responsible for .CL has recently announced changes that will take place for registrations and dispute resolution that will bring them into line with current global practices.

These changes will take effect from December 1st 2013 and include three major modifications:

• Registrations will be available to foreign entities and individuals without requiring the involvement of a local agent,
• Immediate registration for domain names is now possible due to the removal of the waiting period and
• Mediation will be replaced by arbitration.

The arbitration will be a procedure conducted exclusively via Internet and in Spanish. The arbitrator can, however, accept documents in other languages, and request a translation if necessary. Once the arbitrator has gathered all the evidence provided by the parties involved in the dispute and has declared that no further evidence will be admitted, no other document may be presented before the final decision unless the arbitrator himself makes the specific request to clarify a point of contention.

شبكة. pronounced as “Shabaka” in Arabic, translates to “web or internet” in English. It is the first new gTLD (generic Top-Level Domain) to be launched in the next few years. Domain names in .shabaka will be exclusively in Arabic.

شبكة. (.SHABAKA) is being launched with the following phases:

Sunrise Period: 31 October 2013, 00:00 UTC – 29 December 2013, 23:59 UTC

Sunrise Period is only open to applicants who meet the TMCH Sunrise Eligibilty Requirements. The following requirements apply:

• Domain name requested must be in Arabic;
• SMD File will be requested upon application;
• Minimum registration period: 2 years.

Multiple applications received for the same domain name will be allocated based on the result of the auction process.

Landrush Period: 2 January 2014, 00:00 UTC – 31 January 2013, 23:59 UTC

Landrush Period is open to all registered entities and individuals.

Multiple applications received for the same domain name will be allocated based on the result of the auction process.

General Availability: from 4 February 2014, 00:00 UTC

Registration on first-come-first-served basis.

In the context of the new gTLDs, certain candidates have chosen to set up additional protection mechanisms for right holders alongside those of the Trademark Clearinghouse (TMCH). Amongst these candidates is the Donuts company which has applied for 307 new gTLDs and is offering their Domains Protected Mark List (DPML) that aims to shore up the weaknesses of the TMCH.

The DPML is a rights protection mechanism for all the new gTLDs that will be run by the Donuts company. It comes in the form of a trademark database composed of registrations previously validated by the TMCH. It serves to block the registering of domain names containing these marks across all the new gTLDs operated by Donuts. Registering trademarks with the DPML is on a voluntary basis for right holders.

Eligibility: open to all marks registered and maintained in the TMCH and for which an SMD file has been generated (the SMD file is generated by the TMCH for each registered mark that is eligible for Sunrise periods).

Effect: the blockage of the identical mark or the mark plus a term in all the new gTLDs which will be operated by Donuts (for example, for the SONY trademark, the names sony.tld, sony-pictures.tld may be blocked but not the domain name soni.tld). This block is only active as long as the mark remains registered with the TMCH. Blocking must be done for each variation of the mark

Exceptions to the blocking process:

• Marks comprising 1 and 2 letters are not eligible; marks with 3 letters can only be blocked if identical.
• Domain names registered prior to the subscription of marks with the DPML.
• The “Premium” names which will be marketed by Donuts separately. Overall these are generic terms that have a direct link with the marketed TLD, for example order.pizza ou book.flights.
• Domain names registered prior to DPML subscriptions.

A specific domain name can be unblocked on request, providing that the domain name is identical to a mark registered with the TMCH and that the associated SMD file is provided. Such unblocking cannot be prohibited. The right holder would then receive a registration notification from the DPML.

The DPML offers several pros and cons that may be more or less favorable according to the domain name registration policy of the rights holder.

In terms of advantages, it is a powerful weapon in the fight against cybersquatting. In reality, the majority of domain names being cybersquatted today are domain names containing a trademark rather than domain names imitating a mark by approximation.

The disadvantages are the flaws in the mechanism for rights holders who equally wish to register domain names:

• The need to unblock each registered domain name.
• Registration is only possible for domain names that exactly match marks registered with the TMCH by providing the appropriate SMD file.
• Impossible to block domain names identical to the trademark if the proponent has a mark registered in the TMCH. For example, owners of identical marks will not be able to rely solely on the DPML and have to make defensive registrations of domain names.
• Impossible to block trademarks across a selection of TLDs operated by Donuts.
• The obligation to renew the registration of the corresponding mark in the TMCH in order to ensure blocking within the DPML.

In summary, the automatic subscription of a trademark in the DPML is not recommended since it can lead to ‘conflict’ situations. The strategy to be adopted will depend on several factors linked both to the “quality” of the trademark and to the objectives of its holder.

An initial study is necessary to identify the risks and adopt an appropriate protection strategy.