Reveal day coming soon for new gTLD applications: is someone else after your name?

Intellectual Property Update

By:

Reveal DayOver the past several months, the Internet Corporation for Assigned Names and Numbers (ICANN) has been accepting applications for the new generic top-level domain (gTLD) program. 

 

This program allows organizations to own their own top-level domain extension and aims to greatly proliferate the number of available domain extensions beyond the limited number of extensions, such as “.com” and “.org,” to which Internet users are accustomed.  With a few exceptions, an organization could have applied to have almost anything to the right of the dot, including its own company brand name or a generic term. 

 

In a couple of weeks, the public will be able to review, for the first time, the list of gTLDs for which companies have applied.  In advance of the official reveal date, a number of organizations are now announcing the subject of their applications.  Google has announced that it applied for “.google,” “.docs,” “.youtube,” and “.lol.”  The CUNA (Credit Union National Association) has announced that it applied for “.creditunion.”

 

All will be revealed on June 13, 2012

 

ICANN has just announced that the official target "Reveal Day" for the new gTLD program, the day on which the list of all the applied-for gTLDs will be announced, is June 13, 2012.  Given the mixed reaction to the new gTLD program and companies’ reluctance to indicate publicly whether they would be participating in the program by applying for their own gTLDs, Reveal Day is eagerly anticipated.  Many brand owners are also concerned that other organizations may have applied to own a gTLD that includes their same brand name or a generic industry name (such as .hotel, .airline, .beverage) which a company in a particular industry would not want a competitor to monopolize. 

 

In light of these concerns, the June 13, 2012 date is also relevant because it is the day on which the Formal Objection period begins.

 

If problematic applications are revealed

 

A company concerned about a gTLD application it sees upon ICANN’s reveal has a range of options it may pursue, whether it submitted an application of its own in the earlier stage of the program or did not.  ICANN has set forth formal objection procedures to which a company will want to avail itself if the situation warrants.  ICANN anticipates that the Formal Objection period will remain open for seven months. 

 

The grounds for lodging formal objections and submitting to the dispute resolution procedures set up by ICANN include:

 

  • Legal rights – If the applied for gTLD violates the rights of a rights holder (objector does not need to be an applicant of its own gTLD)
  • String confusion – If the applied for gTLD is too similar to an existing top level domain name or another applied-for gTLD (objector must be applicant of its own gTLD or be a TLD operator)
  • Limited public interest – If the applied for gTLD goes against generally accepted legal norms of morality and public order recognized under principles of international law (the objector can be anyone) and
  • Community objection –  If the applied for gTLD purports to target a specific community, but there is substantial opposition to the gTLD within the targeted community (the objector must be an established institution associated with a clearly defined community)

 

As companies review the revealed gTLD applications with counsel in the coming weeks, they should consider developing strategies that will protect their brand names and Internet presence in the wake of the new gTLD rollout. 

 

In situations of serious concern, those strategies should not be limited to the ICANN objection procedures, but should include planning for strategic pre-litigation and litigation measures, given that there is opportunity for court action to affect the process.  Specifically, in the event a legal proceeding is initiated prior to or during an ICANN dispute resolution proceeding, the panel appointed to decide the domain dispute matter has discretion to decide whether to suspend or terminate the dispute resolution proceeding in light of the court action.  Even if a gTLD dispute resolution proceeding is not formally suspended or terminated in light of a court proceeding, equitable relief ordered by a court could have a practical impact on the way the new gTLD applicant might be able to commercialize the extension.

 

For more information on planning and strategies to consider in this phase of the gTLD expansion, please contact:

 

 

Ann Ford

 

Gina Durham

 

Ryan Compton

 

David Kramer

  

 

You may also be interested in our blog Re: Marks on Copyright and Trademark.