The Internet: ICANN’s New gTLD Program

by Ladas & Parry LLP
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The Internet is becoming a much bigger and more complex place for trademark owners, and ICANN’s New gTLD Program is something more for trademark counsel to consider as part of world wide protection of their client’s brands and marks. Ladas & Parry and our affiliated domain name registrar, Ladas Domains, are ready to assist you in this effort.

WHAT: The New gTLD Program adds more generic top level domains

• A “gTLD” is a generic Top-Level Domain. There are currently 22 gTLDs, including .com, .org, .net, .biz and .info.
• The Internet Corporation for Assigned Names and Numbers (ICANN) is now allowing organizations to apply for hundreds of new gTLDs.
• New gTLDs will include:
o Geographic tlds - .wales, .london, .nyc
o Brand tlds - .google, .youtube, .hitachi
o Community tlds - .gay
o Industry/keyword tlds - .bank, .hotels, .toys
o Cause tlds - .eco, .green
o Interest tlds - .sport, .horse, .wine
o Functional tlds - .docs, .mp3
• Do not let the term “generic” fool you. A gTLD can include your client’s trademarks. See the .google example above.
• The initial application period for the first round has now closed. Additional application rounds will be announced at a later date.

WHY: Reasons Why the New Program Matters for Trademark Owners

• Trademark owners, whether or not applying for their own .brand gTLD, will be impacted by this development and should ensure that the new gTLDs will not infringe their legal rights or be used in a way that will harm their brand or business activities.
• New gTLDs could cause consumer confusion, increase online fraud and cybersquatting.
• New gTLDs will affect enforcement budgets.
• New gTLDs may increase branding opportunities.

WHEN: Important Deadlines

June 13, 2012
• 1900+ new applications are made public at http://newgtlds.icann.org/en.
• The 60-day Public Comment period begins.
• The 7-month formal Objection Filing period begins.
• Participants can start to leave Program Feedback.

July 2012
• ICANN’s Initial Evaluation period for the gTLD applications begins

August 13, 2012
• The Public Comment period ends.

December 2012
• The Initial Evaluation period ends.
• The successful applications are posted at http://newgtlds.icann.org/en/program-status/application-results.

January 13, 2013
• The 7-month formal Objection Filing period ends.

1st Quarter 2013
• ICANN hopes to begin delegating successful domains.

HOW: Steps to Consider to Protect Your Trademark

1. Beginning June 13, 2012, review the list of applications at http://newgtlds.icann.org/en/program-status/application-results for:
• New gTLD strings that could conflict with your trademark rights.
• New gTLD strings that may be relevant to your company’s industry.
• New gTLDs strings that may be relevant to your business or be a significant source of cybersquatting. • New gTLD strings applied for by competitors.
2. Object. Between June 13, 2012 and January 13, 2013, formal Objections can be filed with a Dispute Resolution Service Provider based on the following grounds:
• String Confusion Objections: Current gTLD applicants may object to similar applications of other gTLD applicants.
• Legal Rights Objections: Trademark owners able to show rights in the mark may object to a new gTLD application if the string creates an “impermissible likelihood of confusion” with the protected mark (e.g., .eco vs ECCO)
• Limited Public Interest Objections: Companies and individuals may object to gTLD strings which are contrary to generally accepted legal norms of morality and public order.
• Community Grounds Objections: Companies and individuals able to show a likelihood of material detriment to the community may object to applications for standard and "community" TLDs, including industry keywords, if they do not have the support of the relevant community.
For more details about the possibility, costs, etc. of objection, please contact us.

3. Review your company’s internal defensive domain registration policies in preparation for the new gTLDs to consider participation in Sunrise registration periods and defensive registrations.
4. Enroll in Ladas & Parry Watch Services to detect similar and identical new domain names in the new gTLDs, typosquatting trends and other problems.
5. Identify and register your primary marks with the Trademark Clearinghouse to receive Trademark Claims alerts of identical new gTLD applications and to participate in Sunrise registration processes. Clearinghouse details will be announced at a later date by ICANN and we will communicate them to our clients.

WHERE: Additional Resources Where You Can Find More Information

Ladas Domains for information on worldwide registration, maintenance, enforcement, consulting and audit services.
Ladas & Parry Watch Services for information on our domain name and trademark watch services.
ICANN.

In order prepare for the new gTLD program, we strongly encourage our clients to review their existing domain name and trademark portfolios as well as registration and enforcement policies. We are available to help you understand the new processes, opportunities and risks involved.

Should you have any questions or wish to discuss your particular situation, please contact us.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Ladas & Parry LLP | Attorney Advertising

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