[authors: Andrew Baum, Toni Y. Hickey]
On June 13, 2012, the Internet Corporation for Assigned Names and Number (ICANN) revealed the list of new top-level domain names (gTLDs) applied for during the initial application period which ended on May 30, 2012. See http://newgtlds.icann.org/en/program-status/application-results.
The list discloses about 1,900 applications, including more than 100 in non-Latin characters. Many generic terms (e.g., “book,” “baby” and “inc”) are the subject of multiple applications.
The good news for trademark owners is that it appears that most — if not all — of the brand-name gTLDs on the list (such as .ford and .gucci) have been applied for by their legitimate owners. Nevertheless, trademark owners should review the list carefully to determine if any of the applied-for strings conflict with prior trademark rights. Even if a gTLD does not conflict directly with a company’s trademark, it may be a generic, community, or geographic term that was applied for by a competitor or is otherwise relevant to an industry. Brand owners also should pay special attention to the non-Latin character strings (e.g., Arabic, Chinese, and others) to ensure that a translation or transliteration of the string does not infringe prior trademark rights.
The gTLDs on this list are still far from being put into operation. Now that the applications have been revealed, ICANN’s initial evaluation period begins. As part of this evaluation, there will be a 60-day period during which any person or business may submit comments on any application based on: (1) “string confusion,” i.e., confusing similarity to another gTLD; (2) “legal right,” i.e., infringement of a prior trademark right; (3) “public interest”; or (4) “community opposition,” i.e., objections to a community-based gTLD by a member of that community.
Applications that survive the initial 60-day evaluation period will be “posted.” Following such posting, there will be a seven-month period during which parties may make a formal Legal Rights Objection to any gTLD application. An Objection may be lodged asserting that a string: (i) takes unfair advantage of the unique character or the reputation of the objector’s registered or unregistered trademark; or (ii) impairs the distinctive character or the reputation of the objector’s mark; or (iii) creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark. These disputes will essentially be arbitrations to be resolved by panels of World Intellectual Property Organization (WIPO) experts.
Accordingly, today’s publication marks the beginning of a period of increased vigilance for trademark owners.
