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ICANN and gTLDs: Six steps you should take to protect your brand

Companies need to check whether any of the new generic top-level domains are confusingly similar to their own brands - and where that's the case, they need to know what action to take.

The Internet Corporation for Assigned Names and Numbers (ICANN) says it has received 1,930 paid bids for the new generic top-level domains (gTLDs), which can now reflect brand names such as .nike or topics such as .football.

That volume of applications exceeds most initial expectations and takes the internet domain name system and the dispute-resolution procedures that support it into unchartered waters.

Procedures for resolving conflicts and protecting certain rights holders have been provided for, but it remains to be seen how these will work in practice.

Given that this is untested ground involving high levels of investment and a messy start to the procedure, future disputes between applicants, other rights holders and ICANN seem inevitable.

ICANN's June Reveal Day, when bids were detailed, marks the beginning of a lengthy period of evaluation and potential objections for the gTLD applicants, which is expected to last at least nine months. All brand owners - whether they applied for a gTLD or not - will be keen to check whether any of the domains applied for are confusingly similar to their own brands, and to take appropriate action if that is the case.

They should also consider their strategy for second-level domains within some of the new gTLDs. Here are some pointers for what brand owners should think about doing, and when they should be doing it.

1. Check the list

It is important for brand owners to review the list of gTLDs as soon as possible and ask the following questions:

  • Are any domains you might want to oppose because they are similar to your brands?
  • Are there applications for generic terms that your industry might want to oppose?
  • Are there applications for open-registry gTLDs which you might want to block or register second-level domains? Open-registry gTLDs are intended to be open for third parties to register second-level domains. For example, Barcelona football club could apply to the owner of .football to register barcelona.football.

From a brief review of the list, it appears that main categories of applicants include:

  • Brand owners from industry sectors particularly targeted by scams and fraud, such as financial services.
  • Technology brand owners - for example, Google, Apple and Samsung, though interestingly not Facebook or Twitter.
  • Speculators intending to make a profit from running open registries based on truly generic terms. For example, such as .app, .book and .law have been applied for by an entity called Straat. Community applications, particularly those made on behalf of cities - for example, .paris, .berlin and .madrid.

2. Consider whether to file an objection

There are four potential grounds for objections - the deadline is mid-January 2013 - which are summarised in the table below.

Objection type What objector must prove Who can object? Which dispute resolution service?
String confusion The gTLD is confusingly similar to another top-level domain. gTLD operators and applicants ICDR
Legal rights The applied-for gTLD infringes the existing legal rights of the objector. The legal rights relied on may include registered and unregistered trademarks. Rights holders WIPO
Public interest The gTLD is contrary to generally accepted norms of morality and public order. This is intended to be a limited objection. Anyone ICC
Community Substantial opposition from the community at which the gTLD is targeted. Institution associated with a clearly-delineated community ICC

As can be seen from the table, the objection is filed with one of three dispute-resolution services (DRS) rather than ICANN. Objections will result in either the application prevailing and therefore proceeding to the next stage, or the objection prevailing, so the application will be rejected. Detailed rules on the objection processes can be found on the DRS providers' websites.

3. Keep up to date with others' objections

Between now and mid-January 2013, you should track of details of objections filed, which are published on the DRS providers' websites and later by ICANN. These details allow other interested parties to lend support to existing objections, particularly community objections.

4. Register your marks in the Trademark Clearinghouse

To help deal with the potential trademark issues of gTLD, operators selling second-level domains - that's the word to the left of the dot - to third parties, ICANN is setting up the Trademark Clearinghouse.

It is an online database, expected to be available from the third quarter 2012, which will serve as "a central repository for information to be authenticated, stored, and disseminated, pertaining to the rights of trademark holders".

Registering in the Trademark Clearinghouse will enable brand-owners to take full advantage of the sunrise period and trademark claims service described below, which gTLD owners must adopt as a minimum in connection with their gTLD launch.

5. Use the sunrise periods and trademark claims service

The first sunrise periods are likely to be around February 2013. Each gTLD registry must adopt the following as a minimum in connection with their gTLD launch:

  • A sunrise period, which is an opportunity for eligible rights holders to register second-level domain names within the TLD for 30 days before its launch
  • A trademark claims service that provides notice to prospective domain registrants of potential conflicts with existing trademarks and to trademark owners of conflicting domain registrations for at least 60 days following launch.

Brand owners should formulate a strategy for the second-level domains they would like to register, and which they would file objections to, and use the sunrise period and trademark claims service to support that strategy.

6. Consider objecting to second-level domains

The first second-level domains are likely to be registered around March 2013. A uniform rapid suspension procedure (URS) will be set up and used to help resolve clear cases of cybersquatting in second-level domain registrations.

The URS is effectively an expedited and streamlined version of the UDRP, which many will be familiar with as the existing policy used to determine top-level domain disputes such as those involving .com domains.

The URS will sit alongside the UDRP proceedings and court proceedings - for example, for trademark infringement - which a brand owner could use to contest a domain registration.

About

Damian Herrington is an associate at law firm DLA Piper's UK intellectual property and technology practice.

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