United States: ICANN Publishes Updated Applicant Guidebook For The New Generic Top-Level Domain Program

Progression of the New gTLD Program

On May 30, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) released an updated version of the Applicant Guidebook (AGB) for its upcoming new generic top-level domain (gTLD) program.  The publication of this version of the AGB follows a flurry of activity in recent months, including the publication of a prior version of the AGB on April 15, 2011, a public comment period that ended on May 15, 2011, and continuing consultations with the Governmental Advisory Committee (GAC) regarding various program provisions, including intellectual property protections for trademark and brand owners in the proposed new Internet space.

The new gTLD program will allow organizations, for the first time in Internet history, to secure their own customized Internet namespaces (the space to the right of the dot in a domain name) and operate their own Internet registries.  ICANN's rapid-fire release of a new AGB only six weeks after the prior version reflects its commitment to move forward with the launch of the program as expeditiously as possible, following a long series of delays.  This update will provide a brief summary of key developments contained in the most recent AGB, as well as discuss the current state of the new gTLD program and recommended next steps for brand owners who wish to ensure they are prepared for the launch of the application process.  For more in-depth coverage of the new gTLD program and the latest updates, please join us for our webinar, "New Generic Top-Level Domains – Preparing for Launch," being held on June 9, 2011 at 12:00 p.m. Eastern time.  Please click here to register.

Applicant Guidebook Updates

While the April 15 AGB contained numerous significant program updates, including improvements to rights protection mechanisms for trademark owners, the definition of a 60-day application window, an expanded role for the GAC, and numerous additional details regarding the requirements for satisfactorily responding to many of the application questions, the May 30 AGB contains fewer substantive program changes.  Rather, most of the updates in the May 30 AGB reflect clarifications and refinements designed to allow prospective applicants to better understand, and thus prepare for, the application process.  Noteworthy revisions and clarifications include:

• A more in-depth discussion of some of the factors that may trigger a GAC Early Warning, one of the mechanisms added in the April 15 AGB to allow the GAC to provide a preliminary notice that a particular application may be considered problematic by one or more governments.
• A specification that if the GAC chooses to provide formal Advice to the ICANN Board offering a consensus opinion that a particular application should not proceed, the Board will be required to provide an explanation if it chooses not to follow the Advice.
• Some clarifications regarding the role and scope of background screening for new gTLD applicants, emphasizing that, in addition to criminal convictions, certain administrative decisions issued by governmental organizations and consumer protection agencies may also disqualify applicants.
• The announcement of an Applicant Service Center (ASC) to assist with questions that arise during the application process (limited to questions on application forms and procedures).
• Various refinements to the new gTLD application itself, notably, an acknowledgment that some applicants may choose to outsource back-end registry operations.
• Clarifications to certain registry operator responsibilities, including protection of geographic names, assistance with investigations of potential illegal conduct, and privacy and data protection requirements for personal information of registrants.
• A statement that, following approval of the new gTLD program by the ICANN Board, ICANN retains the right to continue to update the AGB as needed.

ICANN has also published two explanatory memoranda discussing various program decisions, with more to come shortly, as well as documents discussing ICANN's planned four-month Communications Campaign (to be implemented following program approval) and the Trademark Clearinghouse, one of the primary rights protection tools for brand owners in the new Internet space.

Current Status of the New gTLD Program and Next Steps in the New gTLD Planning Process

ICANN is continuing to take practical steps to move forward with the program, now set for approval during a special session of the ICANN Board on June 20, 2011 during the Singapore ICANN meeting.  It would appear that ICANN is committed to launching its planned Communications Campaign soon after program approval, and then opening the application period around October 2011.

With the onset of the application period rapidly approaching according to the current timeline, brand owners who have not yet engaged in planning for the arrival of new gTLDs are advised to begin developing their strategy as soon as possible.  One key decision to be made as soon as possible is simply whether or not to apply for a new gTLD.  To assist with this decision, brand owners should take the following initial steps:

• Create a cross-functional team of stakeholders to make business decisions regarding the program, including input at the executive level;
• Ensure that relevant stakeholders are aware of the program, its opportunities, and potential risks of not participating; and
• Assess budgetary, staffing, and technical resources required to apply for a new gTLD and operate a registry.

In addition, all brand owners should ensure that they are prepared for the expansion of the Internet space from an enforcement perspective.  Thus, whether or not applying for their own new gTLDs, before the application period commences, organizations are strongly encouraged to:

• Evaluate their current trademark and domain name portfolios, and assess enforcement priorities;
• Develop an updated enforcement strategy for before the application period opens, during the application period, and after the new gTLDs are operational; and
• Allocate budget and personnel to address new enforcement needs in 2012 and beyond.

Although ICANN has indicated that additional edits may be made to the AGB following program approval, policy changes prior to launch of the application period are not likely to be substantial; thus, brand owners may wish to redirect advocacy efforts to the task of practical preparation.

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.