Free 60 Day Comment Period for New gTLD Quickly Draws to Close

As reported in previous blogs and alerts, the Internet Corporation for Assigned Names and Numbers (ICANN) has published the list of 1,930 generic top-level domain name (gTLD) applications, to add to the .com's and .net's we have today.  The list includes a variety of brand names, such as Google, Amazon, Canon, as well as industry categories, like .music, .software, and .health.

There are more than 1,400 unique proposed “strings,” and another 230 that have multiple applicants, such as .app with thirteen applicants and .music with eight.  Applications for the same string will be evaluated as follows:  initial evaluation, potential dispute resolution proceedings—including formal string confusion, legal rights, and community objections, discussed below—and string contention proceedings.  If one or more of the strings is a community-based application, there will be a community priority evaluation.  If there is one clear winner, the community application will transition to the delegation phase.  Otherwise, applicants with contending strings will participate in an auction, and the winner will transition to the delegation phase.

Whether or not they have applied for a gTLD, brand owners are advised to survey the list for possible use of their marks, as well as any relevant generic words for their industry.  Any concerns with generic names, such as .store, .hotel, .music, and others, or concerns that are not primarily related to possible trademark infringement, should be addressed immediately because the free 60-day public comment window closes on August 12.  For example, brand owners may want to determine whether generic applicants have a strong rights management policy, good business model, and resources to handle domain name abuse.

After the 60-day comment period, there will be a seven month period for formal objections based on the four following grounds.

1. 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 approved.  Only existing TLD operators or other applicants can object on these grounds.
2. Legal Rights Objection - The applied-for gTLD string infringes the existing legal rights of the objector (for example, a trademark infringement).
3. 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.
4. Community Objection - There is substantial opposition to the gTLD application from a significant portion of the community at which the gTLD string is targeted.  Objecting organization must be established in representing a defined community.

Following the formal objection phase, brand owners should continue to be aware of the following procedures to protect their rights under the new gTLDs:

1. Trademark Clearinghouse.  Trademark Clearinghouse will be established for registered marks and other marks protected by court order or statute.  New gTLD registry operators (“Operators”) will be required to provide trademark claims services and sunrise services to owners of marks in the clearinghouse. 
2. Sunrise Services.  Operators will not be required to offer a domain name under a new gTLD unless the trademark owner:  (a) applies for entry in the Trademark Clearinghouse prior to publication of the new gTLD; and (b) registers the subject marks prior to execution of the registry agreement between ICANN and the Operator. 
3. Trademark Claims Services.  Within 60 days after the launch of a new gTLD, Operators must provide prospective domain name registrants under the new gTLD with notice of marks in the Trademark Clearinghouse.  Operators must also notify owners of the marks in the Trademark Clearinghouse if a domain name containing an identical mark ultimately registers under the new gTLD
4. Uniform Rapid Suspension (URS).   ICANN will offer URS as a cheaper and faster dispute resolution remedy for domain name registrations under the new gTLDs.  URS complaints are only recommended for clear-cut cases of trademark abuse, and will be limited to 500 words with a proposed $300 filing fee.