You may recall that earlier this year the International Corporation of Assigned Names and Numbers ("ICANN") began a historic expansion of the internet domain name system by accepting applications for new generic top level domain names ("gTLD's") (i.e. the string of letters to the right of the dot in a domain name). (See Changes in Internet Domain Names Create Opportunities and Risks)
On June 13, 2012, ICANN published the list of gTLD's that were applied for during the initial application window, which closed on May 30, 2012. A total of 1,930 applications were filed; however, in some cases multiple applications were filed by different parties for the same gTLD string. More specifically, there were 751 applications filed for 230 strings that are exact matches.
The addition of potentially over 1,400 new gTLD's will greatly expand "real estate" on the Internet and could affect significantly the way that companies communicate with their clients. Brand owners should review the list of gTLD applications for strings that may be confusingly similar to their trademarks or domain names, and all businesses should review the list to determine whether a competitor or other party has applied for a general term in their field that may be important to their marketing, brand protection or other business strategies.
If you have any issues or concerns with a specific gTLD application, you can file either a comment or an objection to a specific application during the time periods discussed below.
For gTLD applicants, the next step in the process is ICANN's review of their applications. The comment period, which began on June 13, 2012 and will run until August 12, 2012, gives third parties the opportunity to submit information to the ICANN evaluation panels that may be relevant to the review of a specific application.
Comments will generally fall into two categories: (i) evaluation panel comments focus on matters related to the application such as the applicant's technical or financial capability to run a domain name registry; and (ii) comments on objection grounds focus on one or more of the four available objection grounds (string confusion, legal rights, limited public interest, and community). Comments in these categories do not initiate formal objection proceedings but may be considered by the evaluation panels when reviewing the gTLD applications. Comments that fall outside these categories will be made available for public viewing but will not be considered during the evaluation process.
The objection period also began on June 13, 2012 and currently is scheduled to run for seven months until mid-January 2013.
Unlike a comment, the filing of an objection initiates a formal dispute resolution procedure between the applicant and the party filing the objection. Objections can be based on one or more of four grounds:
String Confusion Objection – The applied-for gTLD string is confusingly similar to an existing top level domain name or to another applied for gTLD string.
Legal Rights Objection – The applied-for gTLD string infringes the existing legal rights (such as trademark rights) of the objector.
Limited Public Interest Objection – The applied-for gTLD string is contrary to generally accepted legal norms of morality and public order.
Community Objection – There is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string may be targeted.
Additional information regarding the process for filing a comment or an objection can be found on ICANN's website.
All brand owners should review the list of gTLD applications to determine if their trademark or other rights may be impacted by the new gTLD's. If a gTLD string is confusingly similar to your trademark or domain name, you should consider filing a comment and/or an objection to the gTLD string.
Even if you do not find a string that is confusingly similar to your trademark or domain name, there may be gTLD's covering generic terms used in your industry that might impact your future marketing and brand protection strategies. Reviewing the strings now will allow you time to consider the best way to deal with this historic expansion of the domain name system.
If you would like to discuss how the new gTLD's may affect your business, please feel free to contact Phil Schroeder at email@example.com or (949) 851-5413.
Philip C. Schroeder
Corporate & Securities | Intellectual Property
(949) 553-8354 (fax)