The U.S. Dist. Court in Central California issued a recent decision regarding whether a New gTLD is a “domain name” for the purposes of analyzing the Anti-Cybersquatting Protection Act (ACPA) – an issue of first impression. The case pitted Del Monte International against it’s subsidiary Del Monte Corp., who have been arguing over whether the subsidiary can own and run the New gTLD .DELMONTE. The application for .DELMONTE was made through ICANN, was objected to by the parent company, Del Monte International, and eventually found its way to Federal Court after an arbitration panel decided that the objection had merit.

The Court decided that the New gTLD application for .DELMONTE was not a “domain” – as that term is defined under the ACPA and its legislative history – but, hedged this decision by explaining that if a registry application is passed by ICANN and delegated to the Root Zone of the internet, at that point it could be considered a “domain” under the ACPA, stating:

Moreover, the Court cautions that this holding does not necessarily foreclose application of the ACPA in the context of successful gTLD registrations. The Court agrees with Defendant that owning a gTLD “carries with it a far stronger public association of brand ownership than any domain name registration.” Reply 7:15-17. The need for judicial review in the context of a successful gTLD application therefore is much more significant than in the context of an unsuccessful application.

Practically speaking, being able to attack a gTLD registry under the ACPA, after it has been delegated to the Root Zone, could create a huge problem – at least for registries – and some weird results. The ICANN application process is long and expensive, and includes procedural safeguards for parties to object to a New gTLD application. This decision, however, seems to open the door for parties that lose at the application level to bring an action for cybersquatting once the registry is delegated. Further, the ACPA was drafted at a time when the idea of a New gTLD registry was not even contemplated – so this could lead to a reworking of the ACPA to keep it focused on it’s intended target – cybersquatting against second level domain names. Otherwise, it’s possible that a very expensive and newly delegated New gTLD registry could be the subject of a $1,400 UDRP claim...