ICANN Reveals Applications for New Generic Top-Level Domains (gTLDs)
On June 13, 2012 (also known as “Reveal Day”), the Internet Corporation for Assigned Names and Numbers (ICANN) released the long-awaited list of more than 1,900 proposed new generic Top-Level Domain Names (gTLDs) that have been applied for by various businesses, governments, and other parties. (We previously reported on the new gTLD system here.) A gTLD is the portion of a web site URL “to the right of the period,” such as .com, .org, and .edu. This unprecedented potential increase in the number of available domain names offers businesses the opportunity to expand their brand presence, but also presents an increased risk of brand abuse by competitors and cybersquatters.
Now that ICANN has revealed the new gTLD application list, brand owners should review the list and begin developing a comprehensive gTLD strategy. Of most immediate concern is the public comment and objection period, but proactively reviewing the list now will also help brand owners take advantage of future rights protection mechanisms that ICANN will launch in the coming months.
Public Comments and Objections
Reveal Day opened up a sixty-day public comment period in which the general public can comment on pending gTLD applications. Comments must be submitted in the new gTLD Application Comments Forum by August 12, 2012. Comments will be considered as part of the application file, but do not permit the commenter to actively advocate for a position.
In contrast, the objection process allows brand owners to formally assert legal and other grounds to prevent approval of a gTLD. These grounds are summarized on the Objection and Dispute Resolution Section of ICANN’s web site, and include the legal rights objection, the string confusion objection (the gTLD is confusingly similar to another TLD), the limited public interest objection (based on affronts to generally accepted principles of morality and public order), and objections from a particular community to which the gTLD relates. Objections must be filed by January 13, 2013 and will be arbitrated by one of four different bodies.
Of primary relevance to most brand owners will be the prior legal rights objection, which asserts that a proposed gTLD would infringe the objector’s existing rights, such as a registered or unregistered trademark. The World Intellectual Property Organization (WIPO) will adjudicate prior legal rights disputes. Fees will be at least $10,000 for each of the complainant and defendant, though the prevailing party will be entitled to a refund of most of those fees. More information can be found at WIPO’s Legal Rights Objection web site. If a brand owner believes that a proposed gTLD would infringe its existing rights (or that it has other grounds for an objection), it should consult with legal counsel.
When reviewing the application list for objections, brand owners should also identify new gTLDs that they see as relevant to their business, in which they will eventually want to register their brands or challenge registrations by competitors or cybersquatters. While it will be many months before the new gTLDs are available for registration, planning now will facilitate quick and efficient registrations when the time comes.
Cost will be a consideration. With hundreds of new gTLDs on the horizon, the cost of multiple registrations (at an annual fee of $50 - $500 per domain) in a large number of the new top-level domains will be prohibitively expensive for most brand owners. Businesses should therefore prioritize those gTLDs that have significant business value or present a serious risk of customer confusion or brand tarnishment.
Reveal Day was a significant milestone in the roll-out of the new gTLDs. For most brand owners, now is when the hard work of reviewing, registering, monitoring, and enforcement begins. Those who use Reveal Day to develop an informed gTLD strategy—one that takes into account risk, opportunity, and cost—will be best positioned to grow and protect their brands in the expanded domain name universe.