Beyond the Big Reveal: Tips for Trademark Protection in New Era of Expanded gTLDs

As was widely reported earlier this month, ICANN, the California-based nonprofit Internet Corporation for Assigned Names and Numbers, revealed the first batch of applications filed for new generic top level domains (gTLDs). Among the names revealed were .target, .apple and .cialis. This first batch revealed 1,930 applications, each of which cost the applicant $185,000.

ICANN reported at least two applicants that have applied for more than 230 domain names each.

This creation of additional gTLDs presents interesting questions for trademark owners. Perhaps the most important question is how to continue to protect brands effectively and economically. Conflicts over the new gTLDs are reported to already exist, such as Wal-Mart and Safeway competing for ownership of grocery.

Next steps for ICANN include evaluating the applications for technical compliance, fielding objection from trademark owners, continuing to reveal batches of additional gTLDs purchased and resolving trademark disputes related to the gTLDs.

The reveal started a 60-day public comment period, and a seven-month formal objection period. Of the various types of objections, trademark owners should consider the WIPO-administered legal rights objection process. Brand owners will want to consider whether the proposed gTLDs are relevant, infringing, dilutive or otherwise would harm the value of their brands.

A summit was held earlier this month in New York City, organized by the American Intellectual Property Law Association and the International Trademark Association. Trademark owners, the U.S. Trademark Office and industry leaders were represented. Some of the highlights coming out of that meeting included the following:

• An increased emphasis on the need for collaborative process determination and decision making regarding trademark owners rights and the ability to enforce their rights
• A brainstorming session on how to achieve the appropriate trademark protections
• Whether the claims notice should last longer than 60 days, and whether it should be indefinite
• Whether the claims notice should only take into account identical domain names or also domain names that contain a trademark
• With respect to conflict resolution-the UDRP for the new gTLDs is called "URS" (uniform rapid suspension)-whether a "loser pays" provision should be adopted; whether ICANN should subsidize the proceedings, and whether URS users can rely on evidence that they may already have submitted to the Trademark Clearing House.

ICANN 44, the organization's 44^th public meeting, is underway now in Prague. Discussion topics include implementation of the new gTLD program and dispute resolution. A detailed agenda can be found on the ICANN website.

Some groups have voiced concern, including the FTC, indicating that the additional cyber-real-estate creates heightened risks for fraud. At the end of the day, trademark owners should remain vigilant about protecting their brands within the scope of this expanded digital landscape.