On June 20, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the implementation of a new generic top-level domain (gTLD) program that allows businesses, organizations and other institutions to obtain their own domain name extensions, such as .library or .brand. Nearly 2,000 applications were filed during the first application period, which closed on May 30, 2012. ICANN is scheduled to publish a list of the proposed gTLDs on June 13, 2012, which the public can view here. Many applicants already announced their proposed gTLDs, such as Google, which applied for .google, .youtube and .docs, among others.
Those with interests or rights that may be adversely affected by the approval of a proposed gTLD will have the opportunity to object using dispute resolution procedures established by ICANN. A trademark owner whose rights may be infringed by the approval of a proposed gTLD can file a Legal Rights Objection with the World Intellectual Property Organization (WIPO). Objections to proposed gTLDs can also be filed on three other grounds:
- String Confusion Objection – The applied-for gTLD is so similar to an existing TLD or to another applied-for gTLD that user confusion would likely result if both TLDs were operational.
- Limited Public Interest Objection – The applied-for gTLD is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law.
- Community Objection – There is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD is targeted.
Information about the objection and dispute resolution process is available here. The objection period begins when the applied-for gTLDs are posted and is expected to remain open for approximately seven months.
ICANN is also establishing a Trademark Clearinghouse that will serve as another protection mechanism for trademark owners. The Clearinghouse will function as a single database of authenticated trademarks that all new gTLD registries must use to ensure that mandatory trademark protection mechanisms are implemented after a gTLD is approved and becomes operational. For trademark owners, the fee for initial trademark authentication and validation services is expected to be less than $150 (USD) per submission, and annual renewal fees are expected at a percentage of the initial price.
More information about the trademark protection mechanisms established by ICANN is available here.© MICHAEL BEST & FRIEDRICH LLP