Domain name update: gTLD deadlines, .XXX cancellations and new rules for for .PT registrations

Domain name update: gTLD deadlines, .XXX cancellations and new rules for for .PT registrations

Domain name update: gTLD deadlines, .XXX cancellations and new rules for for .PT registrations

New generic top level domains (gTLDs) deadline looms

On 12 January 2012, Internet Corporation for Assigned Names and Numbers (ICANN) began accepting applications for new gTLDs. New applications will be accepted until 29 March 2012 to meet the 12 April 2012 application deadline. Unofficial lists show applications have been filed for a wide range of generic terms including .music, .bank, .dental and .food as well as applications for well known brands such as .canon, .deloitte, .motorola, .hitachi, .afl and .unicef.

The application fee of US $185,000 and the ongoing annual fees to be paid by a Registry Operator to ICANN, together with the intensive and onerous application process, have deterred some trade mark owners from applying. However, all trade mark owners should be ready for “Reveal Day” on 1 May 2012, when ICANN will publicly post details of all gTLD applications. After this, an Objection Period commences whereby anyone can submit a formal objection to a new gTLD application.

Importantly for trade mark owners, a formal objection can be filed on the grounds that the applied-for gTLD infringes the existing legal rights of a trade mark owner. A panel of experts 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. The objection period will last for approximately 7 months. A formal objection must be accompanied with the dispute resolution filing fee which ICANN currently estimates could range from approximately US $1,000 to US $5,000 per party per proceeding. Further costs will then be incurred during the adjudication process. Trade mark owners should begin to familiarise themselves with ICANN’s process for lodging a legal rights objection and begin coordinating with their attorneys to prepare a strategy for addressing new gTLD applications of concern.

ICANN begins cancellations of defensive .XXX gTLDs

ICANN registry, responsible for .XXX domain name registrations has begun cancelling .XXX registrations that were secured as blocking registrations during the Sunrise B period. In many cases, the registry has simply informed the owner that the domain name has been “cancelled” with no further information. However, a notification of cancellation does not necessarily mean the domain name will be offered for sale. Many of the domain names which have been “cancelled” by the ICANN registry have been withdrawn from the list for sale on the basis they correspond to names of political candidates, celebrity names and certain corporate brand names.

Trade mark owners who did not apply during the Sunrise B period can still take steps to protect their brand by filing an application in the current general availability period as a “blocking” registration. Trade mark owners can still also have recourse to the two main dispute resolution processed available to attack abusive .XXX domain name registration, being the Rapid Evaluation Service Policy (RES) and the Uniform Domain-Name Dispute Resolution Policy (UDRP). Trade mark owners could also challenge the eligibility of an .XXX domain name owner under the Charter Eligibility Dispute Resolution Policy (CEDRP). Unlike the UDRP however, a successful RES or CEDRP will only result in cancellation of a domain name.

Liberalisation of .pt Country Code Top Level Domain (ccTLD)

The entity responsible for the .pt ccTLD has recently announced that the eligibility criteria will be liberalised after 1 May 2012. In particular, after this date domain names in the .pt ccTLD will no longer need to be based on a corresponding trade mark registration. A two month Sunrise period launched on 1 March 2012 to allow trade mark owners to register their trade marks as domain names before the land rush period.