What Trademark Owners Need To Know About The New gTLD Program

Posted on May 10, 2012

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The Internet Corporation for Assigned Names and Numbers (ICANN) will increase the number of generic top-level domains (gTLDs), which label internet domains with such common examples like .com, .org, .net and others.  This increase will mean that businesses can create gTLDs with their business name, if they complete the application process that has been instituted by ICANN.  The steps of the process can be seen here.

ICANN stipulates that now any company can register and apply for a domain name – in any word in any language.  For large corporations, claiming domain names early is particularly important in the case that someone obtains it before the company.  As an example, it would be rather unfortunate if the Apple corporation did not apply to claim .apple, since it is a definitive trademark of the company.  In a worst case scenario, an outsider could apply for that domain and then demand an extraordinary amount of compensation by the actual trademark owner.  While large corporations might be able to take on such a battle, this type of situation would be much more of a hindrance to smaller companies that could potentially deal with multiple costly infringers.  While there are laws in place to protect from such infringement, companies will have to be vigilant in order to protect their trademark.

“What does this mean for me?” ICANN claims the new gTLD Program will give trademark owners new ways to connect to their customers by controlling their own domain ending.  However, many companies cannot afford to apply.  The initial application fee is $185,000 per gTLD.  Additionally, successful applicants pay an annual fee of $25,000 plus costs to operating a registry.  The launch of hundreds of gTLDs may prove stressful to some brand owners because they will have to decide where to file in order to ensure that their trademark rights are enforced.

There are several dates to keep in mind throughout this new gTLD process:

  • March 29, 2012:  Registration closes for those interested in applying for a gTLD.
  • April 12, 2012:  Application deadline.
  • May 1, 2012:  Reveal day, where ICANN will publicly announce those who applied for domains.  At this point, anyone who has an objection to a domain claim can submit a “public comment” to be evaluated by ICANN.  This period ends June 30, 2012.  This also begins the period where formal objections can be filed.
  • June 12, 2012:  Evaluation begins.
  • November 12, 2012:  Evaluation results are revealed.

A technical glich in the TLD Application System has heightened the confusion around the registration process.  ICANN has confirmed that there are over 1,200 applications in the system, but many applicants are still waiting to hear on the status of their application.  ICANN announced they will notify applicants by Tuesday, May 8th if their application was affected by the technical issue.  ICANN will then reopen TAS and allow for application completion of those affected. Accordingly, Reveal Day — as listed above — will be rescheduled, as well as the dates thereafter.  These developments have called into question the system itself and made it difficult for brand owners to announce their applications publicly.

Uncertainty also exists with regard to the stages through which an application must pass before finally approved by ICANN.  Those stages are Administrative Check, Initial Evaluation, Extended Evaluation, String Contention, Dispute Resolution and Pre-delegation. The shortest path for a successful application is to pass Administrative Check (lasting 2 months), Initial Evaluation (lasting 5 months) and then move to Pre-delegation (lasting approximately 2 months) without any Objections filed or String Contention concerns. In this case the evaluation process could take as little as 9 months to complete. However, if objections are filed using dispute resolution procedures, then this time period could take up to 20 months to complete (or longer if unforeseen circumstances arise).

My advice is for companies to review the gTLD applications.  If there are applications that infringe your mark, you may make a public comment or contact the applicant directly.  The best course of action is to develop a strategic plan for combating infringement under the new gTLD program.

Visit here for updates.

Elizabeth Ritter
Ritter Law Firm, LLC

Photo courtesy of annaOMline

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