Westchester Women's Bar Association

Update on the New Generic Top Level Domain Program

Most readers are familiar with ICANN's (Internet Corporation for Assigned Names and Numbers) gTLD (generic top-level domain) program. A top-level domain are the two or more letters that come after the dot. There are two types of top-level domains, generic top-level domains (.com or .info) and country code top-level domains (.uk or .ca). ICANN has been accepting applications for the gTLD program for several years now. This is amounting to a dramatic expansion in the domain name system. See our firm page entitled: The New Generic Top Level Domain Program for an overview of the early stages of the program. ICANN has processed many gTLD applications and is now in launch mode.

Any established private or public organization can apply for a new gTLD to operate a new gTLD registry (assuming the organization meets eligibility requirements). Basically, applicants need to demonstrate the financial, technical and operational ability to run a registry. The operator of a registry will have significant responsibilities and this is reflected in the incredibly high evaluation fee of $185,000. There is also a $5,000 deposit fee per application.

There is an Application Guidebook that specifies all requirements for gTLD applicants which is located at http://newgtlds.icann.org/en/applicants/agb. The evaluation process could take any where from 9 months to over 20 months. Third-party expert panels will evaluate applications according to the criteria set forth in the Applicant Guidebook.

During the process there is a formal objection period. Objections may be filed on the following grounds: string confusion (current gTLD applicants can object to similar applications of other gTLD applicants); legal right objections (trademark holders that are able to show proprietary rights in the mark can object if the string creates a "likelihood of confusion" with the subject mark); community grounds for objection (organizations and individuals who are able to demonstrate a material detriment to the community may object); and limited public interest objections (organizations and individuals can object to strings that are contrary to norms of morality and public order). Independent Dispute Resolution Service Providers will administer the objection process. Specific information regarding the objections can be found in Module 3 of the Applicant Guidebook.

Once an application has satisfied all the requirements outlined in the Applicant Guidebook, including surviving the objection process, passing technical pre-delegation tests and receiving final approval, the applicant will enter into a Registry Agreement with ICANN. Regarding use, an applicant can use the gTLD for its own purposes, for example to promote its own brand or undertake certain marketing plans as long as the registry is in compliance with the registry agreement. It is crucial that the registry operator remains in compliance with the Registry Agreement.

There are several measures a trademark owner should take to protect their rights in light of the new gTLD program. You may register your trademark with the Trademark Clearinghouse. This is a global repository for trademark data. A trademark holder can submit its registered trademarks to the Clearinghouse for two purposes: (1) to obtain priority to acquire domain name registration for the identical mark in any new gTLD during the "sunrise period" (before the general public can acquire the new domain name); and (2) the Clearinghouse will provide notice if the identical trademark is the subject of a registration. In order to guard against close similarities (in addition to exact matches), a trademark owner will need to order a Watch Service.

Trademark owners should also attempt to register their brands preemptively. Once you register in the Clearinghouse, you can participate in sunrise periods offered by the new gTLD registries and blocking services. The company, Donuts offers blocking services where a trademark owner can block all of their marks in all of Donuts gTLD registries simultaneously. Lastly, trademark owners should continue to take advantage of UDRP (Uniform Domain Name Dispute Resolution Policy) and URS (Uniform Rapid Suspension) proceedings. The new gTLD program will inevitably lead us to explore new methods of brand protection and cause trademark owners to vigilantly police the market place.

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