CyberWatch — Vol. 11, No. 2
Editor: John C. McElwaine
CyberWatch new gTLD Update: ICANN Approves new gTLD Program to begin January 2012
On June 20, 2011, the ICANN Board voted to approve the launch of its new generic top-level domain (new gTLD) program. The new gTLD program will allow applicants to apply for and control their own domain space, such as .VEGAS or .LAW, rather than just a second level domain name.
Along with this motion, was further detail concerning the timeline for the roll-out of new gTLDs. Assuming no further delays in the process, ICANN will begin accepting applications during a limited three month period, which would open January 2012 and close April 2012. Some have estimated that ICANN may receive hundreds of applications during this short window. Once the application window has closed, ICANN will likely begin evaluating the applications submitted for new gTLDs. This review period is likely to run throughout 2012 and into 2013, and the first new gTLD registries are likely to become fully operational sometime in early to mid 2013.
When .com TLDs were first popularized there was a land grab resulting in many legal issues for brand-owners who soon discovered that their trademarks had been "squatted" upon. The risks to brand-owners by an unlimited number of new gTLDs and domain names registered within those TLDs that might be identical or similar to the brand-owners' trademark is apparent:
First and obvious, there can be only one registry for any given term. Trademark owners that want to operate a registry under their company name or brand name may be faced with the costs of establishing a registry and offensive or defensive measures to obtain this domain space. ICANN's application process will consist of an initial evaluation period of all applications. This initial evaluation period includes a "string review" of all proposed new TLD. During the string review portion of the initial evaluation, ICANN will review the TLD to see whether it is confusingly similar to another applicant or pre-existing domain name. ICANN will also check to make sure that the name does not potentially conflict with a geographical name associated with a governmental entity (town, city, state, country). ICANN will also post information about the new gTLD applications providing an opposition period so that parties can formally object to a proposed TLD. The grounds for objecting to a TLD are (1) string confusion, (2) legal rights, (3) morality and public order, and (4) community objections.
The second area of concern is ensuring that brand-owners are able to register their marks in those new gTLDs spaces that they wish to have a presence. As a result, it is recommended that that company update or develop a domain name enforcement strategy. As a part of this process, companies should examine their current enforcement budgets and their trademark and domain name portfolios to assess the ability and strategies to take part in rights protection mechanisms that will be a part of the new gTLD program.
The articles published in this newsletter are intended only to provide general information on the subjects covered. The contents should not be construed as legal advice or a legal opinion. Readers should consult with legal counsel to obtain specific legal advice based on particular situations.