Canada: June 13 Was Reveal Day - What Do Brand Owners Need To Do?

Last Updated: July 16 2012
Article by John McKeown

Reveal Day

The Internet Corporation for Assigned Names and Numbers (ICANN) on June 13, 2012 published the list of over 1900 applications for new top level domain names. The list is available here.

Some large brand owners applied for domain names which mirror their trade-marks, but many have not. Google and Amazon have applied for numerous new names but Donuts Inc., a newly formed domain name business, has applied for more than 300 domain names.

Brand owners should carefully review the list to determine if any of the proposed domain names will have a negative effect on them.

The Timeline

Reveal Day has triggered a number of activities in the new TLD program, including:

  1. Anyone interested may submit comments to be considered by the independent evaluation panels during their evaluation of the new TLD applications. The comment period will be open for 60 days; and  
  2. Anyone with grounds to do so may institute a formal dispute resolution procedure relating to any of the new TLD applications.

Beginning in July 2012, evaluation panels will conduct the string reviews and applicant reviews that make up the initial evaluation process. The initial evaluation is expected to be completed for all applications in a period of approximately five months.

String reviews focus on the following issues:

  1. whether an applied-for new TLD is confusingly similar to an existing TLD, or even another applicant's TLD;  
  2. whether the new TLD violates a reserved string;  
  3. whether the new TLD contributes to instability of the domain name system ("DNS"); and  
  4. whether the new TLD is a geographic name which is not allowed.  

Applicant reviews will consider whether the applicant has demonstrated the appropriate technical, operational and financial capabilities to run a registry. The proposed registry services will also be reviewed to determine whether they might cause DNS instability.

When the initial evaluation period ends, ICANN will post the outcome of the initial evaluations. Applicants for new TLDs that failed the initial evaluation can request an extended evaluation.

At the conclusion of the current round, there will be a succession of rounds during which applicants may apply for new TLDs in accordance with terms and conditions set by ICANN. ICANN's stated goal is to launch subsequent rounds as quickly as possible. The exact timing will be based on experience gained and changes required after the initial round is completed. ICANN's stated goal is for the next application round to begin within one year of the close of the application submission period for the initial round but it remains to be seen whether this will be achieved.

Brand Owners

Some brand owners have applied for new TLDs in the current round, but many others have adopted a "wait and see" attitude. It is clear that all brand owners should monitor developments very carefully and make sure that trade-mark registrations have been obtained and are in order.

a) Monitoring

At least two types of monitoring should be carried out. First, brand owners should monitor the activities taking place in the marketplace. A brand owner should closely follow the activities of its competitors as there may be situations where the use of a new TLD can potentially give rise to a competitive advantage.

Second, brand owners should monitor applications for new TLDs and submit comments and consider initiating dispute resolution procedures if their legal rights are infringed. The nature of the relevant dispute resolution procedure during evaluation is described in the next section of this article.

b) Trade-mark Registrations

It will assist a brand owner if its trade-mark portfolio is in good order. Revision and updating of contact information and transfers, if required, should be dealt with. It would also be useful to review whether existing registrations are supported by appropriate trade-mark use.

In addition, under the new system it will be possible to have trade-mark registrations included in the Trademark Clearinghouse, which will assist brand owners when dealing with new domain names issued at the second level, i.e. the domains to be made available to the public by the owners of the new TLDs. As a result, if there are unregistered marks in use or shortly to be used now is the time to file new applications in order to obtain timely registrations. In addition, carrying out a brand audit to make sure all is in order makes sense.

Dispute Resolution Procedures During Evaluation

The Dispute Resolution Procedure is of vital importance to brand owners. In many cases, it is the only way to stop an applicant from obtaining a problematic new TLD. In this regard it is like an injunction. The proceedings are of a summary nature and similar to the existing Uniform Dispute Resolution Procedure ("UDRP"). Other dispute resolution procedures will be available but only after the new TLD is in use.

The objection filing period is now open and will close following the end of the initial evaluation period. Currently, the objection filing window is anticipated to be seven months.

Objectors must file their formal objections directly with dispute resolution service providers (DRSPs), not with ICANN. The process provides a path for formal objections during the evaluation of an application. It allows a party with standing to have its objection considered before a panel of qualified experts.

Dispute resolution proceedings, where applicable, are expected to be completed for all applications within approximately five months.

In filing an application for a new TLD, the applicant agrees to accept the applicability of the TLD Dispute Resolution Procedure. Similarly, an objector accepts the applicability of the TLD Dispute Resolution Procedure by filing its objection.

Grounds for Objection

An objection may be based on any one of the following four grounds:

  1. String Confusion Objection – The applied for TLD string is confusingly similar to an existing TLD or to another applied for TLD string in the same round of applications. In the case where an Internationalized Domain Name (IDN)1 TLD Fast Track request has been submitted before the public posting of new TLD applications received by ICANN, and the Fast Track requestor wishes to file a string confusion objection to a new TLD application, the Fast Track requestor will be granted standing. 
  2. Legal Rights Objection – The applied for new TLD string infringes the existing legal rights of the objector. 
  3. Limited Public Interest Objection – The applied-for TLD string is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law. 
  4. There is substantial opposition to the new TLD application from a significant portion of the community to which the TLD string may be explicitly or implicitly targeted.

DRSP

The authorized DRSPs vary depending on the ground of objection asserted. The Arbitration and Mediation Center of the World Intellectual Property Organization will administer disputes brought pursuant to legal rights objections.

Conclusion

While it may sound simplistic, the basic steps that all brand owners need to take are to monitor, a) what is happening relating ICANN's activities and how the process is unfolding; b) what its competitors are doing in the digital marketplace; and c) what new domain names have been applied for so that appropriate action, including initiating dispute resolution procedures, can be taken. At the same time, a brand owner needs to ensure that its trade-mark portfolio is in good order and protected by valid trade-mark registrations. Carrying out a brand audit to make sure all is in order makes sense.

Footnote

1 IDNs are domain names including characters used in the local representation of languages not written with the basic Latin alphabet (a - z), European-Arabic digits (0 - 9), and the hyphen (-). 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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