Intellectual Property Law Alert: List of Proposed New Generic Top-Level Domains to Be Published June 13, 2012

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On May 30, 2012, the window to submit applications for new generic top-level domains (gTLDs) closed, with more than 1,900 applications received. Now attention shifts to June 13, 2012, "Reveal Day," when the Internet Corporation for Assigned Names and Numbers (ICANN) will publish a list of all applied-for gTLDs, together with the identity of the applicants and the non-confidential portions of each application. Once the list is published, trademark owners and other interested parties will have a limited time under the procedures established by ICANN to file comments and formal objections to approval of each gTLD.

Why Is the June 13 Date Relevant?

Currently, there are only 22 approved gTLDs, such as .com, .net, and .org. Under the new gTLD program, ICANN has committed to approving up to 1,000 new gTLDs a year. Applications are being accepted for purely generic terms (e.g., .law), as well as for new categories such as brands (e.g., .cannon), geographic regions (e.g., .london), and communities (e.g., .irish). As a result, the new gTLD program will likely bring unprecedented growth in the number of available gTLDs, together with potential changes in the way people find information on the Internet and how businesses plan and structure their online presence.

A window into the range of potential new gTLDs has already been provided courtesy of British-based Top Level Domain Holdings Limited, which recently announced that it has filed 68 applications for various gTLDs, including .app, .art, .beer, .book, .cloud, .coupon, .data, .design, .eco, .fashion, .green, .inc, .sale, .store, and .tech.

The new gTLD program presents both opportunities and the potential for abuse. Applied-for gTLDs might be identical or confusingly similar to valuable trademarks, incorporate industry-related keywords, or represent efforts by competitors to pre-empt or control a market space. Once an application for a new gTLD is approved by ICANN, it will likely be difficult to prevent the gTLD from going "live." Accordingly, companies, organizations, individuals, and governmental bodies need to be aware of what gTLDs are being applied for, and by whom, as well as the relevant deadlines and procedures to submit comments and formal objections. Alternatively, becoming familiar with the plans for the various applied-for gTLDs early can provide businesses with an opportunity to consider how best to exploit marketing and communications opportunities that might become available under the new gTLD program.

What Can You Do?

  1. Review the List of Applications: On June 13, 2012, ICANN will publish the full list of applicants and applied-for gTLDs online here. The list can be used to identify gTLDs that potentially conflict with established trademarks or incorporate industry keywords, as well as applications by competitors or interest groups of concern.
  2. Submit Comments: Between June 13, 2012 and August 12, 2012, any interested party may submit public comments about any proposed gTLD to ICANN. There is no charge to submit comments, which can cover any relevant topic. While comments submitted during this 60-day window may be considered by the ICANN panels evaluating each application, comments will not be considered as formal objections and will not by themselves block an application from being evaluated.
  3. File Formal Objections: Parties will have a window of approximately seven months starting June 13, 2012 to file formal objections to specific applications on one of four potential grounds, including that the applied-for gTLD violates the legal rights of the objector, or goes against generally accepted legal norms of morality and public order recognized under principles of international law or is the subject of substantial opposition from a significant portion of the community that the gTLD is targeting. As detailed here, there are different procedures, fee structures, and assigned dispute resolution providers for each of the four categories of formal objections.

More information on the new gTLD program can be found here. If you have further questions on this or other domain name-related issues, please contact a key contributor.

Key Contributors

Anne W. Glazer
Brian C. Park
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