United States: The New gTLD Program - Post-Prague Update

Earlier in 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) conducted an application process for new generic top-level domains (gTLDs), which will allow, for the first time, organizations to customize their Internet addresses to the right of the "dot."  On June 13, 2012, following the close of the application window on May 30, ICANN held a "Reveal Day" event during which the new gTLD applications were unveiled – all 1,930 of them.  The applications greatly exceed the 500 to 1,000 applications originally anticipated by ICANN, thus further demonstrating the potential groundbreaking impact of the new gTLD program on the Internet space in the coming months and years.  As such, it continues to be important for organizations – even those that did not apply for their own new gTLDs – to remain apprised of the program, its upcoming deadlines, and potential enforcement options.  For brand owners and trademark holders, this means taking steps and developing strategy to detect and deter possible infringement both to the right and left of the dot. 

Upcoming New gTLD Program Deadlines

Public Comment Window

Despite some aspects of the new gTLD evaluation process remaining in flux, certain program deadlines are still in place.  In particular, the 60-day public comment window, which allows any party (applicants and non-applicants alike), to comment on a new gTLD application for a variety of reasons, is a key provision that remains unchanged.  Unlike other enforcement options, there is no standing requirement to submit a public comment.  The public comment window, however, will close on August 12, 2012.  Comments must be submitted by this date in order to ensure they are forwarded to the relevant evaluation panels to be considered during the application evaluation process.  Due to the impending comment deadline, organizations should move quickly to assess the landscape of new gTLD applications, identify applications of concern, and develop a strategy for preparing and submitting comments.

GAC Early Warning

In addition, the Governmental Advisory Committee (GAC), an ICANN stakeholder group consisting of representatives from over 100 countries, is in the process of formulating its Early Warnings that pertain to applications the GAC may find problematic for one or more governments.  GAC Early Warnings, which will be issued in late October 2012 following the next ICANN meeting in Toronto, will allow a recipient to withdraw from the new gTLD application process while receiving an 80% refund of the ($185,000) application fee.  As GAC members will likely be influenced by public comments, the next few weeks are a critically important time to assess and target applications that are ripe for GAC attention, scrutiny, and a possible Early Warning. 

Formal Objections

During the Prague meeting, ICANN staff confirmed that ICANN plans to hold the formal objection window to seven months for all applications.  While a specific deadline for filing objections has not been announced, this deadline will remain in January 2013.  As each objection type (string confusion, legal rights, limited public interest, and community) has specific substantive and standing criteria, organizations should begin assessing their ability to voice objections and the grounds on which they would be made.  Organizations that do not have standing may wish to pursue other avenues, such as submitting public comments or coordinating objection efforts with industry groups. 

GAC Advice

In April 2013, around the time of the Beijing ICANN meeting, the GAC will issue formal advice to the ICANN Board regarding applications that, in the consensus opinion of the governments, should not proceed to delegation.  While GAC advice may also consist of non-consensus opinions or remediation requests, in most cases, GAC advice will create a presumption that the ICANN Board should block a particular application.  Again, the GAC will likely consult public comments when making such determinations; hence, as GAC advice remains one of the best potential methods for ensuring that a problematic application does not proceed, further underscoring that the submission of well-crafted public comments is critical at this juncture.

Second-Level Enforcement Mechanisms

Presentations in Prague offered updates on the two key new enforcement mechanisms developed to support the new gTLD program, the Trademark Clearinghouse and the Uniform Rapid Suspension System (URS).  In terms of the Trademark Clearinghouse, ICANN is working actively with its vendors, Deloitte and IBM, on the technical and logistical implementation.  While a number of implementation issues remain under development, and more stakeholder consultation is still required, ICANN expressed confidence that the Clearinghouse would be available to brand owners and launched in a timely manner in conjunction with the delegation of new registries.  Thus, while the Clearinghouse may not open to accept registrations in October 2012 as originally planned, brand owners will still likely be able to submit their marks for registration later this year or early in 2013.  As such, trademark holders should continue to evaluate their portfolios in order to determine priorities for Clearinghouse submission in the next few months.

With regard to the URS, ICANN admitted that it is facing significant challenges in securing a dispute resolution provider to administer the process within the $300-$500 price point originally contemplated.  As such, ICANN is continuing to seek community input regarding how to streamline the URS process in order to ensure the service can be offered within the desired price range.  ICANN staff promised the issue would be resolved in time for the delegation of new registries; however, as the URS is a required rights protection mechanism for new gTLDs, both applicants and brand owners have urged ICANN to ensure timely resolution is a top priority.

Brand Owner Enforcement Initiatives

As may be expected, a number of brand owners are expressing concerns regarding certain aspects of the landscape of new gTLD applications.  In particular, top brand owner concerns include:  applications for generic regulated industry terms by applicants not offering adequate registration controls and criteria; control of generic regulated industry terms as closed registries by individual companies; and applications for terms that, while offering little commercial or other value for the Internet space, will require consumption of enforcement resources to secure second-level protection.  In this last category, specifically, a number of brand owners are organizing to voice concerns regarding the applications for .sucks, .rip, and .wtf.  If you are interested in joining this initiative, please contact us as soon as possible.

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.