• gTLD Applicants and Trademark Owners: On Your Marks....
  • May 25, 2012 | Authors: Neil Magnuson; William R. Poynter
  • Law Firms: Williams Mullen - Raleigh Office ; Williams Mullen - Norfolk Office
  • On May 21, 2012, following nearly a month of down time, the Internet Corporation for Assigned Names and Numbers (ICANN) reopened its TLD Application System (TAS) for seven business days, giving brand owners a small window during which to submit applications for new generic Top Level Domains (gTLDs).[1]
     
    Before TAS was shut down on April 12 following identification of a “technical glitch,” ICANN had received 2,091 applications for new gTLDs.  A grand “reveal” of the “public portions” of the applications, including applicant names, the proposed new domains, and other information, had been scheduled for April 30, 2012.  But in light of the delays caused by the “glitch,” it is now anticipated that the “reveal” will occur sometime in June.[2]
     
    I. Objections to gTLD Applications
     
    Once the reveal occurs, brand owners and other concerned parties will have approximately seven months to file objections to submitted applications.  The allowable objections are as follows: 

    • String Confusion Objection - The applied-for gTLD character string is so similar to an existing TLD or to another applied-for gTLD string that user confusion would likely result if both TLDs were delegated.

    • Legal Rights Objection - The applied-for gTLD string infringes the existing legal rights of the objector.

    • Limited Public Interest Objection - The applied-for gTLD string is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law.

    • Community Objection - There is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string is targeted.

    Brand owners will more than likely rely upon the legal rights objection, which can be raised by any party that has valid rights to the string of characters that make up the gTLD, even if the objector is not an applicant.  After the objection filing period closes, the gTLDs will move through the dispute resolution process.  Once an objection is filed, the applicant may settle with the objector, file a response and engage in the dispute resolution process, or withdraw the application.  The Arbitration and Mediation Center for the World Intellectual Property Organization (http://www.wipo.int/amc/en/index.html) has been chosen to decide legal rights objections.  If the objector prevails, the disputed gTLD application will be terminated.  However, it may well occur that more than one party has rights in a given gTLD character string—if this is the case, the objector will not be successful in preventing the registration of the gTLD.  This may be of significant concern for brand owners.

    The remaining types of objections require that the objector be a new gTLD applicant or existing TLD operator (for string confusion objections), or meet other specialized criteria (for limited public interest or community objections). Organizations that are especially concerned with third party applications may wish to familiarize themselves with these objection types and requirements.
     
    II. Review of gTLD Applications - “Batching” and “Archery”
     
    Following the reveal, ICANN will commence review of the new gTLD applications.  ICANN has announced that this review will occur in multiple “batches” of applications.  The gTLDs in the first-reviewed batch, which is expected to consist of 500 applications, are expected to become available in 2013, while gTLDs in later-reviewed batches may not become available until 2014 or later.  As explained on ICANN’s gTLD microsite, whether a particular application will be reviewed in an earlier batch or a later batch will be determined by a “digital archery” process, whereby applicants will “be notified to register into an online system to set a future time target” and will then be challenged to log back in at the target time and “try to hit submit as close as they can to the target time.”
     
    For those applicants seeking to be among the first to launch their new gTLDs, therefore, the digital archery process will prove to be critical.  Understanding this, entities such as Pool.com have begun to advertise services designed to improve applicants’ chances of success in the digital archery process.
     
    III. “Sunrise” and “Landrush”
     
    Once applications have been assigned batches, the review process will commence, and, at some point, the first of the new gTLDs will be introduced.  Once this occurs, it is expected that the owners of each new gTLD will commence registration processes for their gTLD.  While these processes may differ in some respects, it is expected that all gTLD registries will conduct a “sunrise” launch period, whereby trademark owners will have an opportunity to register their trademarks within that gTLD.  Following the sunrise period, many gTLD registries will conduct a landrush launch period, whereby non-trademark owners will be able to apply for domains within the gTLD, potentially under a first-come, first-served system.
     
    IV. How Does This Affect Me?
     
    Prospective gTLD applicants that have not yet submitted their applications will need to do so before TAS closes at 23:59 GMC/UTC on May 30, 2012.  All new gTLD applicants will then need to assess the importance of an early launch and, as necessary, determine whether assistance with the digital archery process may be needed.
     
    Non-gTLD applicants - in particular, trademark owners - should look for the “reveal” sometime in June, and, upon disclosure of the new applied-for gTLDs, identify whether to object to any of the gTLD applications, and identify a subset of them within which they will seek to register domains incorporating their trademarks or brands.  For many trademark owners, domain registration within every new gTLD may be cost-prohibitive, so it will be necessary to prioritize accordingly.

     


    [1] ICANN announced the reopening of TAS through an update on its website on May 21, 2012.  ICANN has also published the Top Things Users Should Know When TAS Reopens, which it advises prospective applicants to review.
    [2] ICANN’s FAQ 1.6 forecasts that the reveal should occur “[a]pproximately 2 weeks after the application submission period closes.”