On June 13, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) published the long-awaited list of applied-for new generic Top-Level Domain Names (new gTLDs). As we have reported in the past, ICANN approved a program in June of 2011 to expand the Internet’s Domain Name System through the introduction of new gTLDs. On January 12, 2012, ICANN began accepting applications for new gTLDs by opening an application window, which, after a well-publicized security “glitch”, closed on May 30, 2012. The unveiling of the applications occurred in London, and the event was recorded and is available for listening on the ICANN website, www.icann.org. Following is a summary of these applications.
Summary of New gTLD Applications
There were 1,930 applications, including 84 community-based applications, 66 applications for geographic names and 116 internationalized domain names. Approximately one third of the applications appear to be for .BRAND domains. The regional breakdown of applicants is: North America, 911; Europe, 675; Asia-Pacific, 303; Latin America, 24; and Africa, 17. The regional split is not precise, however, since some multinational applicants selected a group company rather than parent through which to apply. For example, Amazon’s 76 applications were filed through its Lithuanian company and are therefore categorized as European.
A total of 751 applications were filed for 230 strings that are exact matches with at least one other application (see box). It remains to be seen how many other, non-identical matches will be viewed by ICANN as being too similar and therefore placed in string contention. Applicants for strings in contention are encouraged by ICANN to reach an agreement between themselves, with the final resort being an auction.
Donuts, Inc., a venture capital-funded company which is publicizing its applications, is associated with 307 applications, all filed by different limited liability companies. Donuts appears to be positioning these gTLDs for independent commercialization. The single entity with the most applications was Charleston Road Registry Inc., which applied for 101 domain names. Charleston Road Registry Inc. is wholly owned by Google.
ICANN previously announced that it was configured to process no more than approximately 500 applications at a time, and it had therefore established a procedure called “digital archery” to divide the more than 1900 applications into separate batches for evaluation. The issue of how the applications will be batched and evaluated is significant because it will determine the order in which the new gTLDs will be added into the root server system of the Internet, and be made available for use by the public.
Digital archery was heavily criticized by ICANN’s Intellectual Property Constituency (IPC) of which INTA is a founding member. In light of such criticism, as well as technical problems plaguing the complicated system, ICANN announced on June 27 that the digital archery portion of the batching process would be terminated, effective immediately. There are not yet any plans to delay the evaluation of the applications, which is slated to begin on July 12. ICANN now needs to determine whether to evaluate all of the applications in a single extended evaluation batch, or to develop a new batching procedure.
In another development, ICANN’s GAC advised that it will not be able to provide the “GAC Advice” required as part of the evaluation process any earlier than April 2013. This could delay the delegation of any new gTLDs beyond ICANN’s current projected date.
Managing Brand Protection
June 13, 2012, also marked the beginning of the 60-day public comment period and the seven-month objection period. Objections may be based on string confusion, legal rights, public interest or community oppositions.
The Reveal gives the first real indication for brand owners and their legal advisers of the extent of the brand protection issues they are likely to face in the online space in the future. A significant proportion of the 1,930 domain names applied for appear to be generic words. Given the duplication of strings, not all of these will proceed. However, there will be a substantial number of new gTLDs launching in due course. If third parties are permitted to register domains, including other companies’ brands, at the second level within those domains, this would pose a significant brand protection risk.
In an effort to reduce some of this risk, ICANN is establishing a Trademark Clearinghouse to serve as a repository of information regarding registered trademarks. All new gTLD registries will be required to use the data collected in the Clearinghouse during the mandatory Sunrise Period and Trademark Claims phases of the second-level domain (SLD) registration. Brand owners who register their marks with the Clearinghouse must submit proof of actual use of their marks to support their claims for Sunrise applications within new gTLDs. Additionally, Registries must consult with the Clearinghouse and provide notice to prospective registrants if their proposed domain names conflict with any trademarks registered with the Clearinghouse. However registries are not required to refuse to register conflicting SLDs provided that the prospective registrant makes a declaration that the domain name does not infringe.
ICANN has announced that the Trademark Clearinghouse services will be organized and provided jointly by Deloitte and IBM. Their primary services to rights holders, consisting of trademark authentication and validation of proof-of-use are expected to cost less than US $150 per submission. The annual renewal fee is supposed to be a percentage of the initial fee.
Companies need to begin the work of protecting brands in these new gTLDs now. Initially, brand owners will want to assure themselves that none of the applications conflict with their own brands. If they do, brand owners should consider filing public comments before August 12, 2012, or formal objections before the projected January 13, 2013, deadline for filing legal rights objections.
Brand owners should review their existing domain name protection strategies in light of the new gTLDs and respective SLDs. It will be financially impractical for most, if not all, companies to protect all of their brands in all of the new gTLDs. Brand owners will, therefore, be well-advised to identify the gTLDs likely to be most relevant to their business operations and start making decisions now about which of their key brands they will register with the Clearinghouse and secure their budgets accordingly.
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Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association