Lena Carlsson is Vice-President of Domain Strategy at Melbourne IT Digital Brand Services and a former Vice-Chair of ICANN’s Government Advisory Committee. She can be contacted at lena.carlsson@melbourneit.com.au.
There are currently more than 225 million global domain registrations today. More than 20 million new domains have been added since the end of 2010 alone. The opportunity for new generic Top Level Domains (gTLDs) to make your brand stand out from the masses is considerable; however, there is also potential for brand infringement. ICANN is expected to receive between 1,000 and 1,500 applications for “.brands,” “.genericwords” and “.communities.”
This expanded domain landscape will become clearer in the coming months and offer pros and cons for brand owners. Every organization with a major online brand presence needs to be aware of this impending change and know the options for protecting and enhancing brands in an increasingly complex online environment.
April 30 Is Reveal Day
On April 30, 2012, ICANN will publicly post all gTLD character “strings” that have been applied for, as well as which organizations applied for each string, and how each organization intends to use the name.
Brand owners will be eager to check out who has applied (and what they have applied for) so that they can assess the impact on their online brand strategy. Some brand owners may find that another organization has applied for an exact match to one of their brands, or may find that another organization has applied for an industry term that relates to one or more of their brands. For example, a hotel chain may be interested in applications for .hotel, including who is applying for it, how the name will be used and what protections the operator of .hotel has in place to protect the legal rights of brand owners within the hotel industry.
If a brand owner finds there is an application for a gTLD name where the intended use of that name may infringe on their legal rights, then they have the option to object to that application. This applies to all organizations—not just those applying. Every major company doing business online should be aware of their options.
Options to Respond
Comment Period.
After the gTLD applications are posted on April 30, anyone may submit comments, which will be made public, on any application free of charge for the next 60 days. This window is absolutely critical as it is almost the only way for a brand owner or individual to have their voice heard by the Evaluation Panel, which determines if a new TLD string meets the evaluation criteria. Examples of comments might include:
• “These strings look confusing and are too similar to another.”
• “The applicant is a known cybersquatter.”
• “This company’s infrastructure is down most of the week.”
• “The applicant has not allocated sufficient resources for implementing abuse prevention and mitigation.”
• “The applicant does not have sufficient safeguards to prevent unqualified registrations at the second level.”
ICANN’s Evaluation Panel will take these comments into account when writing their evaluation. The public comment period will close by the end of June 2012.
Formal Objection.
Companies also have the option of filing a formal objection in relation to an application. There is a seven-month window to file a formal objection to any of the strings posted on Reveal Day (April 30). It is expected that the majority of any formal objections lodged will be trademark-related.
There are strict criteria about the grounds for a formal objection, which include string confusion, legal rights infringement (generally trademark), limited public interest, or a community objection (not in the interests of the community at which it is aimed).
Objections will be managed by independent Dispute Resolution Service Providers (DRSP). For example, ICANN has appointed the World Intellectual Property Organization (WIPO) to handle trademark disputes. Formal objections should be lodged by the end of November 2012, and no later than two weeks following the posting of the Initial Evaluation results.
It should be noted that the criteria for a successful legal rights objection are quite stringent. Just because your organization has an identical trademark to an applicant, it does not automatically mean your organization will successfully prevent an application being approved.
For example, a hypothetical situation could be that American Broadcasting Company (ABC) applies for .ABC, and the Australian Broadcasting Corporation (ABC) does not. If American Broadcasting Company (ABC) plans to use .ABC to responsibly promote its own services and meets all technical and management requirements to operate a new TLD, it is unlikely that the Australian Broadcasting Corporation (ABC) would be successful in objecting purely on the basis of having a competing trademark.
But more importantly, if the American Broadcasting Company (ABC)’s application for .ABC is successful, it would effectively block a visually similar name such as .obc or .abe, from being permitted in future application rounds.
String Contention
ICANN will not approve multiple applications for proposed gTLD strings that are identical or are so visually similar that they could result in user confusion. Applicants that are identified as being in String Contention are encouraged to reach a settlement or agreement among themselves that resolves the contention (this may occur at any stage of the process). For example, the parties may agree to jointly use the string, or reach a settlement in which a competing party withdraws.
Community-oriented applications that are in string contention can opt for a priority evaluation and if they pass this, they will prevail over a competing application. For example, it is likely that an industry body representing banks would be more likely to be successful in applying for .bank than a single bank because the industry body represents the banking community.
If no agreement can be reached between competing parties, the last resort is to go to an auction to select the operator for a particular gTLD. ICANN is a nonprofit organization, so funds raised through the auction process will be reinvested by ICANN into the internet community.
The Challenge
The protection mechanisms available are extensive, but the challenge many organizations will face is effectively participating in the different processes given the short time frame available. From reviewing the publicly posted applications consisting of several hundred pages each, to conducting a thorough risk assessment, to lodging a public comment or managing a formal objection—not many organizations will have the resources or the expertise to manage this process.
With approximately 1,000 applications expected and at least 25 pages of critical information in each application to review, there could be at least 25,000 pages to scan. Sifting through all those applications to find the handful that pose a risk will be a time-consuming task—time that legal teams don’t have. It is highly likely that busy legal departments will enlist experts in analyzing the potential for online infringements to help them uncover and address any risks.
With only 60 days to file a public comment, every day will count.
New TLDs in 2013
The results of the initial application evaluation period are likely to be published in November 2012. This is when many applicants find out if they have passed the ICANN criteria (although ICANN has said some applications may pass evaluation even earlier). If successful, and there are no formal objections to the application in the two-week period following the posting of the initial evaluations, the applicant can begin preparing to operate its new TLD from around February 2013. All approved new TLDs must be active within 12 months of approval.
This vast new generation of Internet domain names will begin to go live in 2013, but the process to get there—and carefully—is far from over. Whether your organization is applying for a new TLD or not, the time to consider how you’ll handle the risks is now.
Disclaimer
This document and any discussions set forth herein are for informational purposes only, and should not be construed as legal advice, which has to be addressed to particular facts and circumstances involved in any given situation. Review or use of the document and any discussions does not create an attorney-client relationship with the author or publisher. To the extent that this document may contain suggested provisions, they will require modification to suit a particular transaction, jurisdiction or situation. Please consult with an attorney with the appropriate level of experience if you have any questions. Any tax information contained in the document or discussions is not intended to be used, and cannot be used, for purposes of avoiding penalties imposed under the United States Internal Revenue Code. Any opinions expressed are those of the author. Bloomberg Finance L.P. and its affiliated entities do not take responsibility for the content in this document or discussions and do not make any representation or warranty as to their completeness or accuracy.
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