On June 13, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) revealed that 1,930 new applications had been filed in the online TLD Application System (TAS). This represents a significant increase over the 500 applications that ICANN originally anticipated.
This article is part of a continuing series dealing with what brand owners need to do to protect their brands. While the best course of action for each brand owner will vary widely, there are some basic steps that should be taken in virtually all cases.
Background
It is unclear what the impact of the new TLDs will be but the prospect of having so many more new domains seems staggering. One view is that with 100 million ".com" names in use it will be very difficult to change the current system. ICANN and others believe that new TLDs are a platform of innovation. The program has been referred to as a wave of change coming to the Internet. No one can predict with complete accuracy what kinds of new products and services might be developed and no one knows what new TLDs will bring. However, numerous applicants have invested substantial sums for the opportunity to take a part in the process.
What Was Revealed?
Out of the 1,930 applications, 1,846 were of the standard variety and 84 were community applications designed to operate for the benefit of a defined community.
66 of the applications relate to geographic names such as .Africa, .London, .Paris, etc. and 116 of the applications relate to international domain names (IDNs) not written in the basic Latin alphabet.
230 of the applied for domain names are the subject of two or more applications and as a result, 715 applications will be in contention sets to ascertain who among the multiple applicants is entitled to the domain name. Included within this category are .app, .home, .art, .blog, .book, .shot and others. There are also applications for similar strings, e.g., .photo and .photos. These applications will also be in contention sets (described below).
Donuts Inc., a newly formed domain name registry has applied for 307 TLDs. Google is seeking to register 101 TLDs and Amazon has applied for 76 TLDs. Presumably applicants of this type are attempting to take advantage of economies of scale relating to the operation of the applied for TLDs.
Some of the domain names applied for by Google will be open to the public to register, but others will be closed for use by Google only. Amazon has indicated that all of the domain names applied for it will be closed and only used for its purposes. This seems surprising and criticism has been directed at ICANN for allowing it to happen.
725 of the applications relate to brand names. While the number is not insignificant it seems that many brand owners have adopted a "wait and see" attitude. In addition, some brand owners have applied for generic TLDs that are unrelated to their brand names.
The Timeline1
In the new online application system, TAS, an applicant must first register and then apply. The application window opened January 12, 2012 and March 29, 2012 was the last date for new user registrations to meet the initial application deadline of April 12, 2012.
On June 13, 2012, ICANN publicly posted all the new TLD character strings that were applied for, and who applied for each. The list is available here. This triggered several more activities in the new TLD program including:
- Anyone interested may submit comments to be considered by the
independent evaluation panels during their evaluation of the new
TLD applications. The comment period was be open for 60 days
closing on August 12 but in light of the number of applications
received ICANN has extended the closing an additional 45 days to
September 26, 2012.
- Anyone with grounds to do so may institute a formal dispute resolution procedure relating to any of the new TLD applications.
On January 12, 2013, ICANN has said the objection period will close. This means that dispute resolution procedures, discussed later in this paper, must be filed by then.
During June and July, 2013, ICANN anticipates the completion of the evaluation process and publication of the results.
During the period July to September, 2013, ICANN anticipates delegation and release of the new TLDs.
Evaluations
Each application must proceed through an evaluation process before it can be allowed and delegated. Evaluation panels are currently conducting the string reviews and applicant reviews that make up the initial evaluation process.
ICANN has said that it will implement a tentative project plan that contemplates processing all of the applications as a single batch with the simultaneous release of results. They currently anticipate completion of the process and publication of the results during June and July, 2013. Delegation and release of the new TLDs would occur late in the third quarter of 2013, six months later than expected. This projection is subject to the caveat that ICANN will not delegate TLDs at a rate greater than 1,000 per year. ICANN is currently seeking comments on how to meter or smooth the process so that a large number of applications are not delegated at the same time.
String reviews focus on the following issues:
- whether an applied-for new TLD is confusingly similar to an existing TLD, or even another applicant's TLD;
- whether the new TLD violates a reserved string;
- whether the new TLD contributes to instability of the domain name system ("DNS"); and
- 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.
Contention Sets
Groups of applied for strings that are either identical or similar are called contention sets. If an application is identified as being part of a contention set, string contention resolution procedures will not begin until all applications in the contention set have completed all aspects of evaluation, including dispute resolution, if applicable.
Community-based applications have priority over standard applications. If the issues relating to a contention set cannot be resolved by a community priority evaluation, or through voluntary agreement among the involved applicants, an auction proceeding among the applicants will be used to resolve the impasse.
The Trademark Clearinghouse
The Trademark Clearinghouse is a central repository for information to be authenticated, stored, and disseminated, pertaining to the rights of trademark holders. The Clearinghouse will provide two primary functions:
(i) authentication and validation of the trademarks in the Clearinghouse; and
(ii) serving as a database to provide information to the new gTLD registries to support pre-launch\ Sunrise or Trademark Claims Services.
ICANN requires that each new TLD operator use the services of the Trademark Clearinghouse. The Clearinghouse will be global in nature and avoid the requirement to register marks in separate databases for each new TLD as they are launched.
ICANN has entered into agreements with service providers relating to the Clearinghouse and recently said that it should be launched in the fourth quarter of 2012. The statement seems optimistic as there were delays in entering into the agreements.
Recently it has been observed by a number of interested parties that basic pre-launch\ Sunrise or Trademark Claims Services required by ICANN in conjunction with the Clearinghouse will not be sufficient to protect well known brands and that defensive registrations may still be required. This has in turn prompted requests for additional protection measures but to date ICANN has not responded to these requests.
Subsequent Rounds
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 has said that the next application round should begin within one year of the close of the application submission period for the initial round but this will not be achieved because of the large number of applications.
Dispute Resolution Procedures During Evaluation
The Dispute Resolution Procedure is of vital importance to Brand owners. 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 will open after reveal day and close following the end of the initial evaluation period.2 Currently, the objection filing window is anticipated to be seven months. and close January 12, 2013.
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.3
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.4
Grounds for Objection
An objection may be based on any one of the following four grounds:
a) 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 IDN ccTLD 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.
b) Legal Rights Objection – The applied for new TLD string infringes the existing legal rights of the objector.
c) 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.
d) 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.5
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.6
Steps Brand Owners Should Take Now
It is clear that all brand owners should monitor developments very carefully and take the steps necessary to protect their brands.
a) Monitoring
At least four types of monitoring should be carried out. First, brand owners should review the listing of applied for TLDs closely to make sure that they will not be negatively affected. They should have submitted comments and can still give consideration to initiating dispute resolution procedures. The nature of the relevant dispute resolution procedure during evaluation is described later in this article.
Second, brand owners should monitor the activities taking place or likely to take 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. In addition brand owners should consider the potential impact of the use of generic TLDs.
Third, brand owners need to monitor ICANN's activities and how the process is unfolding. As we have seen from the delays relating to reveal day, ICANN will change the timing of previously announced events and may change the nature of the elements of the program.
Finally, it seems inevitable that online branding and internet navigation will change as a result of many new TLDs. The impact of these changes will need to be taken into consideration by brand owners.
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 program 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.
c) Existing Domain Names
Since it is quite likely that new registrations of key brand names will need to be obtained at the second level for the new TLDs, it makes sense to review existing domain registrations and to develop criteria for determining what brand names to protect and how this will be done.
Conclusion
While it may sound simplistic the basic steps that all brand owners need to take include the following:
a) reviewing the list of applied for TLDs closely to make sure that they will not be negatively affected;
b) monitoring the activities taking place or likely to take place in the digital marketplace;
c) following what is happening relating ICANN's activities and how the process is unfolding; and
d) keeping online branding current.
If there are significant concerns about a pending application dispute resolution procedures may be appropriate. At the same time a brand owner needs to ensure that its trade mark portfolio is protected by valid trade mark registrations and that it takes proactive steps relating to its domain name portfolio.
Footnotes
1 This note is current to September 2012, but there is still significant uncertainty associated with the timeline and there may be further delays.
2 Applicant Guidebook, module 1, paragraph 1.1.2.6.
3 Applicant Guidebook, module 1, paragraph 1.1.2.9.
4 Applicant Guidebook, module 3, paragraph 3.2. and see module 6.
5 Applicant Guidebook, module 3, paragraph 3. 2.1.
6 See WIPO Rules at www.wipo.int/export/sites/www/amc/en/docs/wipolrorules.pdf
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.
