Wednesday, June 13, 2012

gTLD Reveal Day is Here...What it Means for Brand Owners

Wednesday, June 13, 2012
Earlier today, the Internet Corporation for Assigned Names and Numbers (ICANN) unveiled the list of applied-for generic Top Level Domains (“gTLDs”) and who applied for them. To see the list, click here.

What are gTLDs?

There are currently just 22 established TLDs, or Top Level Domains (com, .biz, .net, .org, etc.). The new gTLD program is breaking the system wide open by allowing businesses, communities and governments to apply to register a word or “string” of their choosing, including non-Latin scripts such as Arabic, Chinese and Cyrillic. Some examples of the strings applied for include .amazon, .google, .doctor, .ltd, .shop (some with multiple applicants).

The window to apply for the new gTLDs closed on May 30, 2012. Most brand owners will not have taken part in the application process to date, as the majority of businesses and organizations will neither be interested in nor able to take on the costs and responsibilities of applying for and operating a gTLD registry. For those of us who have not applied for a new gTLD, there are still important things to know about this process.

What’s next in the gTLD process?

June 13, 2012 (“Reveal Day”) triggers the commencement of the Application Comment Process. For 60 days, any interested party can submit application comments that will be taken under consideration by evaluators.

Reveal Day also triggers the Objection Period, during which anyone with grounds may file a formal objection to a gTLD application. The Objection Period will last approximately seven months. Objections must be based on one of the following four grounds, as set out by ICANN:
String Confusion Objection - The applied-for gTLD string is confusingly similar to an
existing TLD or to another applied-for gTLD string in the same round of applications 
Legal Rights Objection - The applied-for gTLD string infringes the existing legal rights of the objector 
Limited Public Interest Objection - The applied-for gTLD is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law. 
Community Objection - There is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string may be explicitly or implicitly targeted.
Once the Objection Period closes, the Dispute Resolution Period opens and lasts 5 months.

Trademark Clearinghouse Services

ICANN is currently working with IBM and Deloitte to create and operate a Trademark Clearinghouse, an important mechanism for trademark rights protection in the new gTLD program. The Clearinghouse will perform two main functions: 1) authenticate and validate trademarks in the Clearinghouse and 2) serve as a centralized database of authenticated trademarks that will be used to provide information to new gTLD registries to support sunrise and trademark claims services. With the implementation of the Trademarks Clearinghouse, trademark holders will not need to register their marks in multiple databases as new gTLDs are launched.

For more information on the Trademark Clearinghouse, including expected costs, timelines, and standards for inclusion in the Clearinghouse, click here.

I am a brand owner – what should I do next?

1) Review the list of applied-for gTLD strings to identify problematic applications, including strings that may conflict with your trademark rights or negatively impact your industry.

2) If you identify any gTLD strings that are potentially problematic, consider taking advantage of the application comment process and/or filing a formal objection based on one of the four grounds identified above.

3) Keep abreast of developments with the Trademark Clearinghouse and, when the time comes, ensure that your important trademarks are registered with the Clearinghouse.

For more information on the new gTLDs program, click here.

By Jennifer Dove