Update to ICANN's New gTLD Procedures: How to Register and/or Protect Your Marks
In June 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the plan to dramtically increase the number of top-level internet domain name identifiers (gTLDs) from the current 22 (such as .com, .org, .net) by accepting applications for new, customized gTLDs from January 12, 2012 through April 12, 2012. This plan essentially allows for nearly any “dot-something” to be created: .furniture, .BMW, .YourBusinessNameHere. As of March 10, 2012, it was estimated that over 250 applicants had registered with the TLD Application System, which requires the submission of a USD$5,000 registration fee and then the timely submission of a detailed application, followed by payment within the timeframe of the remaining per-gTLD application fee of USD$180,000. Potential applicants for a new gTLD have only until March 29, 2012, to register with the TLD Application System and pay the $5,000 registration fee in order to then submit an application for a new gTLD. As noted above, registrants with the TLD Application System will then have until April 12, 2012, to submit the actual applications for their own gTLDs. Applicants for a new gTLD are not just getting a new domain name. An applicant for a new gTLD is, in fact, applying to create and operate a registry business supporting the Internet’s domain name system. This involves a number of significant responsibilities, as the operator of a new gTLD is running a piece of visible Internet infrastructure. Certainly, several technical and international considerations factor into the registration process, and if the desired gTLD includes words such as “olympic” or “red cross”, uses a country name, is the registered trademark of another party, is to be in languages other than English or characters/scripts other than Latin, for example, detailed evaluation and dispute resolution procedures have been designed to resolve such issues. Some major companies such as Coca-Cola and General Electric have stated they are opposed to the new gTLDs because of possible increased costs, customer confusion, and internet fraud issues. However, brands that decide not to act within the current window will risk an indeterminate period of disadvantage with competitors because ICANN has not announced any additional windows of opportunity to apply for new gTLDs.
ICANN has noted that certain applicants, such as those from developing economies, may qualify for financial assistance in the form of an evaluation fee reduction and other in-kind or community pro bono services. The financial assistance element will allow a limited number of qualifying applicants to pay a USD$47,000 evaluation fee instead of the full USD$185,000. Be aware that ICANN is not contemplating a notification system to alert brand or trademark owners. ICANN will, however, post the public portions of all applications received in early May. This posting will include applied-for strings, applicant names, application type, mission/purpose of proposed gTLD, and other public application data.
If trademark owners decide to not submit an application for a new gTLD at this time, then they should review the postings to determine if someone else has applied for a new gTLD that does not belong to them. If that happens, then the trademark owner should act within 7 months to submit formal objections using ICANN’s dispute resolution procedures.
If you are interested in applying for a new gTLD, or would like to have the posted applications reviewed for possible intellectual property issues or conflicts with your marks, please contact us as soon as possible to discuss the application and follow-up process. If you have any questions about the new gTLD procedures, please let us know.
