New generic top-level domain names, or gTLDs, are the latest development in the internet’s domain name system. gTLDs are the part of an Internet address that tells you what sort of site you are visiting, such as ‘.com’ in www.tresscox.com.au. A gTLD is also referred to as a gTLD ‘string’ (sequence of characters).
In June 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a programme to expand the Domain Name System through the introduction of new gTLDs. Currently there are 22 gTLDs used across the internet. ICANN proposes to expand that number by at least 1,000. Applicants for gTLDs will take on responsibility as domain name registries, possibly granting licences for third parties to make use of the gTLD. For example, the owner of the gTLD ‘LAWYER’ may license TressCox to use TressCox.Lawyer. The application fee was US$185,000 per string, and there will be a maintenance fee of US$50,000 per year for successful applicants.
ICANN began accepting applications for new gTLDs in January this year. After some administrative difficulties as a result of its system crashing and a resulting delay of a few months, on 13 June it published the list of the new gTLDs that have been applied for in the first round of applications. The list, which can be viewed at http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en, includes strings that directly reflect their applicants’ well known brand names – for example: FUJI XEROX, GARNIER, CHANEL, GOODYEAR, DATSUN, GUCCI, HERMES, HOME DEPOT, HYUNDAI, JAGUAR, LEGO, MONT BLANC, ORACLE, PFIZER, YELLOW PAGES, YOUTUBE and ZARA. There were 41 applications by Australian companies, including ANZ, CBA and AFL.
Some interesting multiple applications for gTLD strings have been received. For example, 13 applications for ‘APP’ (none of which was made by Apple Inc., which applied for ‘APPLE’), 11 applications for ‘INC’, 8 applications for ‘DESIGN’, 5 for FREE, 5 for GAMES, 6 for LAW, 2 for LAWYER, 7 for LOVE, 4 for PIZZA, 8 for MOVIE and 7 for MUSIC. There are 11 applications for the word ‘HOME’ and 7 for ‘HOTEL’. The letters ‘CPA’ have been applied for by CPA Australia Limited as well as the American Institute of Certified Public Accountants and three other parties.
Beginning in July, ICANN will review the list of applications in batches. This process will include string reviews and applicant reviews. String reviews focus on whether an applied-for TLD string is too similar to another TLD, whether it meets technical requirements, and whether it is a geographic name (in the case of a geographic name special rules apply). Applicant reviews focus on the applying organisation to determine whether it has demonstrated the appropriate technical, operational, and financial capabilities to run a registry. The applicant's proposed registry services will also be reviewed to determine whether they might cause instability in the domain name system.
The evaluation process will include a 60-day public comment period and 7-month formal objection period, during which time trade mark owners can formally object to a new gTLD application. There are several types of objections applicants and non-applicants may raise during this period, including a legal rights objection, 'string' confusion (i.e. the gTLD is confusingly similar to another existing or proposed gTLD), limited public interest, and objections based on the interests of a particular community.
Brand owners will likely find the legal rights objection to be the most relevant. A legal rights objection can be raised by any party that has valid rights (for example, a registered trade mark) to the string of characters that make up the gTLD, regardless of whether the objector is an applicant. If the objector prevails, the infringing application will be terminated.
If, at the conclusion of the objection and evaluation processes, two or more applicants remain in contention, the final decision will be made through an auction process.
TressCox Lawyers Special Counsel Clare Mirabello has recently returned from the 2012 Annual Meeting of the International Trademark Association (INTA) in Washington D.C., where the issues arising from these developments were widely discussed.
If you are concerned about your brand in light of the domain names that have been applied for, Clare and her team can ensure you take the necessary steps to protect your intellectual property rights and your commercial advantage.
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