Whether your organization is applying for a new TLD or not, the time to consider how you'll handle identifying risks is now
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ICANN, the governing body for internet domain names, will soon begin processing nearly 2,000 applications for new top level domain (TLD) names. From “.brands” like .google, to “.genericwords” such as .music, or “.communities” such as .nyc, these names will soon begin an evaluation process to see if they will join familiar TLDs like .com, beginning in 2013.
For most organizations, sifting through all those applications to find the few that pose a trademark or business risk will be a time-consuming task. There will be thousands of pages to research. With only 60 days to file a public comment after all the applications are publicly revealed, and about seven months to file an objection, every day will count. Whether your organization is applying for a new TLD or not, the time to consider how you’ll handle identifying risks is now.
The Big Reveal
On June 13, ICANN will publicly post all gTLD character ‘strings’ that have been applied for, as well as identify the organizations that have applied for each string and how the TLD is intended to be used.
Brand owners and trademark holders will need to check out who has applied (and what they have applied for) so that they can assess the potential impact that a successful application and new TLD will have on their business interests. Some brand owners may find that another organization has applied for an exact match to one of their brands, or an industry term that relates to one or more of their brands.
Comment or Object?
There will be two primary response mechanisms available to organizations concerned with specific TLD applications – a free comment or a formal objection.
The 60-day comment period allows anyone to submit a comment on any application, free of charge. Comments are reviewed by the TLD application’s evaluation panel, and should concern only matters related to the evaluation criteria set out in the Application Guidebook.
Examples of areas where a comment would be meaningful to the evaluation panel could be an applicant’s poor understanding of technical requirements to operate a new gTLD, lack of robust registration and abuse or rights management policies, or a weakness in the application business model.
However, it is important to note that potential legal rights infringements do not fall into the comment category, and ICANN has made clear that “comments on matters associated with formal objections will not be considered by panels during initial evaluation”.
In other words, it’s important to know what constitutes a formal objection so you don’t waste your time on a comment that actually won’t be considered.
Four Crucial Grounds For Objection
There is a seven-month window in which a formal objection may be filed in relation to any of the strings posted on Reveal Day. The grounds for objection fall into four categories:
1. String Confusion Objection – The applied-for gTLD character string is so similar to an existing TLD or to another applied-for gTLD string that user confusion would likely result if both TLDs were approved. Only existing TLD operators or other applicants can
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object on these grounds.
2. Legal Rights Objection – The applied-for gTLD string infringes the existing legal rights of the objector (for example, a trademark infringement).
3. Limited Public Interest Objection – The applied-for gTLD string is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law.
4. Community Objection – There is substantial opposition to the gTLD application from a significant portion of the community at which the gTLD string is targeted. To be an objector here, your organization has to be established in representing a defined community.
ICANN has appointed dispute resolution providers to manage all formal objections received. Once the objection period closes (expected to be around seven months after the reveal day – roughly January/February 2013) the objection hearings will begin and are expected to be resolved within five months.
The publicly available application information which should be scrutinized includes:
- String Name
- TLD Type (ie. Is it Closed/Open, Generic/Community or a dotBrand?)
- Legal Entity Information (Type, Location, Parent Company etc.)
- Mission (Statement, Benefits, Social Costs)
- Registration Process
- Abuse Prevention Policy
- Rights Protection Policy
Protecting Your Brand
From reviewing the publicly posted applications consisting of several hundred pages each, to conducting a thorough risk assessment, to lodging a public comment or managing a formal objection – the process is likely to require a significant amount of time, effort and money to determine whether or not certain strings pose a risk to your brand or your interests.
The protection mechanisms available are extensive, but the challenge many organizations will face is effectively participating in the different processes given the short timeframe available. It will require an intensive investment in resource and expertise on several fronts. With ICANN’s reveal day likely to start the clock ticking in the next month, the time to develop your organisation’s strategy on how to manage this process is now.
Ashe-lee Jegathesan is General Counsel for Melbourne IT Digital Brand Services and leads the company's new gTLD application consulting team. Ashe-lee can be contacted on firstname.lastname@example.org