New gTLD Program: ICANN Releases String Contention Sets; Posts Date to Open Trademark Clearinghouse

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The Internet Corporation for Assigned Names and Numbers (ICANN) Feb. 26, 2013, released the preliminary list of string similarity contention sets (groups of two or more applications containing identical or visually similar gTLD strings). The list contains few, if any, surprises. ICANN placed all 230 strings for which it received multiple applications - 751 applications in all - into exact-match contention sets. The most popular of these include .app (13 applications); .home and .inc (11 applications each); .art (10 applications); .blog, .book, .shop and .llc (nine applications each); and .music, .movie and .design (eight applications each). Other applied-for strings with large contention sets include .baby, .sale, .law, .love and .news. Perhaps the only surprise is how few nonidentical strings are on the list. Only .hotels/.hoteis and .unicorn/.unicom appear there. Significantly, while the seven .hotel applications appear in an exact-match set, ICANN did not find them to contend with .hotels.

The list represents ICANN's preliminary identification of contention sets during the initial review phase. According to the Applicant Guidebook, final configuration of the contention sets are established once the evaluation and dispute resolution processes conclude, since certain applications may be excluded through those processes. The resolution of string confusion objections may also add strings to existing contention sets. The formal objection period closes March 13, 2013.

According to the Applicant Guidebook, once ICANN establishes the final contention sets, the resolution process begins. String contention is resolved through one of three processes: self-resolution among the competing applicants; an auction; or in cases where one or more applicants has submitted a community-based application for competing strings, through community priority evaluation. Only one applicant can prevail in each of the contention sets.

ICANN also announced March 26, 2013, as the opening of the Trademark Clearinghouse, the trademark information database intended to allow verified trademark holders to protect their trademarks as the new gTLDs are delegated. Beginning on that date, trademark holders will be able to submit trademark data and to register their marks with the Trademark Clearinghouse. Once their information is verified, trademark holders can then register domain names consisting of their marks during a sunrise period of at least 30 days. During both the sunrise and 60-day claims periods, the Trademark Clearinghouse also will notify rights holders when a third party applies for a secondary domain name that matches the rights holder's mark and will warn the domain name applicant of the existence of the trademark. The Trademark Clearinghouse is a registration and notification system, not a dispute resolution process. Rights holders will still have to challenge potentially infringing secondary domain names through other dispute resolution procedures. The sunrise and claims services apply only to exact matches of a domain name to a word mark, not variations.