• The Next .Step in Internet Expansion
  • June 14, 2012 | Authors: Kristen L. Fancher; Joel Ross Feldman
  • Law Firm: Greenberg Traurig, LLP - Atlanta Office
  • From January 12, 2012 to May 30, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) accepted applications for new generic top-level domain names (gTLDs) from individuals, companies, and organizations worldwide. A gTLD is the term appearing to the right of the dot, such as com, net, and org. Although not every gTLD application will mature into a gTLD registration, as a result of the 1,930 new gTLD applications, the range of gTLDs will expand dramatically from the current total of roughly two dozen.

    On June 13, 2012, ICANN released a list of the applied-for gTLDs and the companies who have applied to run them. This list is relevant for monitoring direct infringements of a client’s brand name(s) and provides useful reconnaissance on industry trends and competitor behavior. Therefore, clients are encouraged to review this list closely; it is available on ICANN’s website at http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc13jun12-en (http://t.co/POdsltrQ) (or by contacting your GT attorney).

    Brand owners and institutions can object to any of the applied-for gTLDs. Although the objection deadlines have not yet been set by ICANN or the applicable dispute-resolution service providers, it is expected that objectors will have approximately seven months to file their objections. There are four kinds of objections:

    • Legal Rights Objections: appropriate where the applied-for gTLD infringes the legal rights (e.g., trademark rights, right of publicity) of a brand owner. These disputes will be resolved by the World Intellectual Property Organization (WIPO);

    • Community Objections: appropriate where an established institution associated with a clearly-defined community objects to a gTLD application. These disputes will be resolved by the International Chamber of Commerce;

    • String Confusion Objections: appropriate where the applied-for gTLD is confusingly similar to another applied-for gTLD or existing gTLD. These disputes will be resolved by the International Centre for Dispute Resolution; and

    • Limited Public Interest Objections: appropriate where the applied-for gTLD is contrary to generally-accepted legal norms of morality and public order. These disputes will be resolved by the International Chamber of Commerce.

    After an objection is filed, the gTLD applicant may (1) withdraw its application, (2) attempt to reach a settlement with the party that has objected, or (3) file a response to the objection and enter the dispute resolution process.