Jun 13, 2012

New gTLD Approvals Moving into Second Phase

On June 13, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN), the non-profit organization responsible for overseeing numerous Internet related tasks, revealed the new generic Top-Level Domain (gTLD) names that have been submitted for registration as well as the identity of the corresponding applicants. A total of 1,930 applications have been submitted by companies from around the world, leading to what is anticipated to be the largest increase in domain names since the Internet adopted the Domain Name System. However, these applications are subject to ICANN’s review process, in which you may participate to protect your marks or brands.

What is a gTLD?

A Top Level Domain (“TLD”) is the grouping, or “stringing”, of letters found to the right of the “dot” in an internet address. TLDs are currently grouped into two main types: country code Top Level Domains (ccTLDs) (e.g., .uk (United Kingdom) and .cn (China)) and generic Top Level Domains (gTLDs) (e.g., .com, .edu, and .gov). ICANN has set up a process for approving and assigning new gTLD strings and operators. The process to register your own gTLD, however, can be very expensive (the application fee is $185,000) and is scheduled to take many months to complete.

These new gTLDs may be comprised of client marks. For example, Amazon has filed an application to obtain .amazon. Microsoft has filed an application to obtain .windows. You may want to obtain .yourmark. While ICANN has indicated that the gTLD application process is ongoing and will likely open new application opportunities each year, this year’s window for applying for a new gTLD has closed.

Even though the application window has closed for this year, and even though you may not want to obtain the gTLD for your mark, you may not want another entity to obtain a gTLD that is identical or similar to your mark. The approval process, which provides some avenues for public comments and objections, is about to begin, and is discussed below.

The Approval Process

As stated above, ICANN has made public a list of the applied for gTLDs. ICANN is accepting public comments on every listed application. These comments must be submitted within sixty days of June 13, 2012. While parties are free to submit comments on any application, the comments have no legal effect in the process.

ICANN has established a formal objection process to challenge the acceptance of an application. An objection can be filed on the basis that (1) a string is confusingly similar to another string; (2) a string infringes on a legal right of another entity; (3) the string is contrary to legal norms of morality; or (4) there is substantial opposition from the community to which the string is directed (either explicitly or implicitly). These objections are then examined by various panels in a Dispute Resolution Process. Objections must be filed by November 13, 2012 in order to be accepted. The fees to file an objection range from $2,000-$3,000. Pursuing the objections through the Dispute Resolution Process will likely cost more than $10,000 per party for each objection presented.

Once an application successfully navigates the public objection phase, ICANN can then resolve any issues with confusingly similar strings (possibly with an auction between applicants) and carry out additional vetting of the applicant. If the applicant demonstrates that it has complied with all of the technical requirements of the approval process and has the infrastructure in place to handle running a Top Level Domain, the domain is delegated to the applicant. Operating the domain in compliance with the ICANN’s policies and procedures is estimated to cost more than $1,000,000 for the first couple of years.

What Can You Do to Protect Your Trademark?

File Objections

If you are concerned about another entity registering your mark or brand as a gTLD, we recommend that you review the published list to identify applications for new gTLDs that are identical or similar to your mark or brand. Upon identifying any identical or similar gTLDs, you can file a formal objection as described above. However, these objections must be filed by November 13, 2012.

Apply for a gTLD

When ICANN begins accepting additional gTLD applications, you may apply for your own gTLD.

Register Your Mark with ICANN’s Trademark Clearinghouse

Beginning in October 2012, you can take the additional step of registering your trademark with ICANN’s Trademark Clearinghouse. It is expected that trademark holders and registry operators of new gTLDs will use the Trademark Clearinghouse to support rights protection mechanisms for the new gTLD system. For example, the Trademark Clearinghouse will eliminate a trademark holder’s need to register his or her marks in multiple databases as new gTLDs are launched, serving as a single database of authenticated registered trademarks. Further, it is expected that new gTLD operators will be required to use the Trademark Clearinghouse when registering secondary domain names. The fee per trademark registration is anticipated to cost approximately $150. However, the Trademark Clearinghouse is not yet operational. As such, please keep a look out for our Client Alert regarding the Trademark Clearinghouse that will be circulated closer to the Trademark Clearinghouse’s date of availability.

Smith, Gambrell & Russell is prepared to assist our clients with all phases of the process for securing a gTLD, objecting to other applied-for gTLDs, and registering with the Trademark Clearinghouse. Please contact your Smith, Gambrell & Russell contact lawyer, or any of the lawyers listed on this Client Alert, for assistance and for more information.

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