New gTLD’s: all is revealed!
In mid 2011, ICANN announced, after several years of study, a process to allow organisations to operate their own generic top level domains (gTLDs) i.e. new internet domains in addition to the 22 existing gTLDs such as .com, .net, .org, etc. Applications closed on 30 May 2012. Last night, in a ceremony in London, ICANN publically revealed on its website a list of 1930 applications submitted for new gTLDs. Brand owners will now need to decide quickly on an appropriate brand enforcement strategy for potential action against new gTLD applications of concern.
The time for public comment and formal objection has now commenced. These are important dates:
|13 June 2012||Reveal Day||Announcement of all applied for domain names|
|13 June 2012||Application comment period commenced||Community can submit comments on any application to one of the evaluation panels.|
|13 June 2012||Formal Objection period commenced||A formal objection may be filed on any one of four grounds, including legal rights objection.|
|13 August 2012||Application comment period ends||Comments not accepted after this date.|
|January 2013 (TBC)||Formal Objection period ends||Objections not accepted after this date.|
ICANN has not yet set a date for the end of the Formal Objection period however, it is anticipated to run for seven (7) months from Reveal Day. The grounds upon which objection may be based are; Legal Rights, Community Interests, Limited Public Interest and String Contention (e.g. conflicting applications for .abc). Of these grounds the most important for trade mark owners are legal rights objections (LRO’s).
What if a new gTLD infringes your legal rights?
During the Formal Objection Period, an objection can be filed on the grounds that the applied for gTLD domain name infringes the existing legal rights of the objector. A specially appointed Dispute Resolution Service Provider, World Intellectual Property Organization (WIPO) will determine whether the potential use of the applied for gTLD by the applicant takes unfair advantage of the distinctive character or reputation of the objector’s registered or unregistered trade mark or service mark, impairs its distinctive character, or otherwise creates a likelihood of confusion. The specific grounds upon which a Legal Rights Objection may be determined are similar to those available for second level domain name objections under the Uniform Domain Name Dispute Resolution Policy (UDRP). It is currently estimated that the single expert WIPO fee will be US$2,000 and for three experts, US$3,000. There will also be panellist fees of US$8,000 and US$20,000 for a single or three member panel, respectively.
Should you search for potentially problematic new gTLDs?
Yes. We recommend that you review the reveal list for potentially problematic new gTLDs. If any application is of concern to you further information and documentation relating to the proposed gTLD, available from ICANN, should be investigated. This process is likely to be complex and time consuming. DCC is able to assist you in this through its access to search functionalities and risk assessment services ranging from basic scans to detailed examination and assessment. Costs will vary according to time and complexity but are expected to be in the range of $2,000 to $3,500 for detailed examination and assessment.
What to do now
Brand owners should be developing strategies now for searching ICANN’s list of new gTLDs for potentially problematic extensions. This could include compiling lists of business names, trade marks, product names and individual names to be cross checked against the list of new gTLDs. Once problematic new gTLDs have been identified, brand owners should contact their responsible attorney at DCC to discuss whether they should lodge Legal Rights Objections and the steps involved and likely costs.
After new gTLDs are established
New gTLD’s are expected to commence operation in early 2013. After that date brand owners will need to consider registering second level domain names in the new gTLD’s and be alert for conflicting names. New procedures have been proposed to assist in this including a Trade Marks Clearing House, a Trade Marks Claims Service, a Sunrise Period and a Uniform Rapid Suspension System (URSS). We will advise you further of these developments in due course.