Trademark Owners Have Limited Opportunity to Object to New Top Level Domains

On June 13, the Internet Corporation for Assigned Names and Numbers ("ICANN") revealed that over 1900 applications had been received to operate new Top Level (after the dot) Domains (“TLDs”). Applications include such common generics as (dot)movie, (dot)watches, (dot)beauty, and (dot)sports, but also include some brands such as (dot)airbus, (dot)ibm, and (dot)walmart. Some generic domains have numerous applicants who will compete to obtain the new domain. These applicants could end up in a bidding war if they survive the public comment period, the Government Advisory Committee Early Warning, and the third party Objection process. For example, there are five applications to run the (dot)tickets TLD. Internet giants Yahoo! and Google are actively involved, as are high profile brands such as L’Oreal and Cartier. In addition to English language domains, there are also new IDN (Internationalized Domain Name) TLDs in Chinese, Arabic, and other scripts. The first new domains are expected to launch in early 2013, with not more than one thousand new domains to launch in the first year of delegation. Applicants paid an initial fee of U.S. $185,000 and have committed to run the TLD for which they applied for at least ten years.

The deadline to provide public comments which will be considered by the evaluators is a firm August 12, 2012. The deadline for filing one of four formal types of objections to an application to launch a new Top Level Domain is January 12, 2013. The four formal types of objections are String Confusion Objection (open only to holders of existing Top Level Domain registries), Limited Public Interest Objection (for objecting to immoral or scandalous registries, e.g. promoting child pornography), Community Objection (for established communities, e.g. an indigenous people group, a public service organization, or a trade association which believes the domain should be held open for the entire community and not held by any one owner), and finally a Legal Rights Objection which gives trademark owners the right to object to an award of a Top Level Domain that is confusingly similar to its established trademark. Community Objections are to be filed with the International Chamber of Commerce in Paris, France while Legal Rights Objections are to be filed with the World Intellectual Property Organization in Geneva.

Running parallel with this comment and objection process, the Government Advisory Committee to ICANN (the GAC) may signal an Early Warning to the ICANN Board with respect to any TLD where there is a consensus of the over 100 government representatives that the new TLD should not go forward. In addition, individual governments may indicate Early Warning as to any particular TLD of concern to that government. To facilitate this process, the U.S. Dept. of Commerce National Telecommunications and Information Administration solicited comments from various government agencies which are due Friday, July 20. However, based on the rules in the Applicant Guidebook and past performance by the ICANN Board, unless the GAC as a whole communicates an Early Warning consensus, it is not likely that the award of a new TLD will be stopped in this manner.

The list of new gTLD applications is provided below. Please review this list to determine whether you have any interest in filing public comment during the evaluation period or in filing a legal objection. Members of the Lewis and Roca IP group have been participating and actively monitoring developments in the ICANN process through membership in the ICANN advisory supporting organization known as the Intellectual Property Constituency since May of 2010. We are familiar with the formal objection process and the inner workings of ICANN. Should you require assistance with public comments on applications due August 12, 2012 or with a formal objection due no later than January 12, 2013, please contact a Lewis and Roca Intellectual Property lawyer, or Ms. Anne Aikman-Scalese directly.


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