Canada: What Brand Owners Need To Do To Cope With The New Domain Names After Reveal Day

Last Updated: October 22 2012
Article by John McGowan

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.


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: 

  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 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.
  2. 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.


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: 

  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.

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 


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.


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.


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 

3 Applicant Guidebook, module 1, paragraph  

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 

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions