New Top Level Domains The Sunrise Proposal Pistols at Dawn


If you thought that cyber-squabbling for the best domain names (.com, .net etc) is almost over and that all the best names have gone, think again. The most hotly contested topic on Internet Domain Name Policy e-mail lists at the moment is the manner in which new generic top level domains should be introduced. The received wisdom is that there are simply not enough .com domains to go round and that new suffixes are needed. Deciding what they should be is problem enough (some have suggested .sex in addition to the more restrained examples such as .shop, .bank and .eu); deciding how they should be shared out is likely to be an even greater headache.

ICANN (the international body responsible for domain name policy) has decided that new top level domains should be introduced, but not how many, which ones or when. Not surprisingly, trade mark owners are determined that any new policy should respect their rights, although where two users each have legitimate claims to a mark, disputes are bound to arise as to who should get the domain.

Suggestions put forward include:

  1. The creation of a special top level domain such as .tmk or .fame for domain names consisting of trade marks or famous trade marks. (Other top level domains would remain unregulated);
  2. The creation of a list of famous marks which would be available for registration in the new top level domains only by the trade mark owner;
  3. A notification procedure which would automatically notify trade mark owners if a domain name containing their mark is registered in the new domains; and
  4. The implementation of a sunrise period during which brand owners could register their mark and a number of variations of their mark in the new domains before the opportunity to register the same character string is opened up to the public at large. If the registered mark is owned by different parties in different countries or for different goods or services, it would be first-come-first-served.

Proposal number 4, commonly known as the "Sunrise Proposal", has caused a particularly ferocious debate. The proposal has been born partly due to the difficulties envisaged in compiling and maintaining a fair and accurate list of famous marks. The rationale for the Sunrise Proposal is to avoid the situation encountered previously in the .com and other generic top level domains. Specifically, the first-come-first-served rule enabled cyber-squatters the world over to registered domain names containing trade marks with the intent to profit by selling the domain name to the trade mark owner or the highest bidder. The Sunrise Proposal has been described as a compromise between, on the one hand, famous marks being excluded forever from registration by the public in the new domains and, on the other hand, a free-for-all.

Although many are of the view that trade mark owners are adequately protected (e.g. by national trade mark laws, the ICANN Dispute Resolution Procedure, the US Cyber-squatting Act and domain name monitoring services) Intellectual Property lawyers and brand owners believe that a large number of unregulated new top level domains would be the worst conceivable nightmare for trade mark owners. Brand owners will have to ensure their views are heard loud and clear if they wish the Sunrise Proposal to see the light of day.