On June 13, 2012, ICANN publicly released the list of generic top-level domain name (gTLD) applications. ICANN had announced that just over 1,900 applications had been submitted. The new gTLDs will provide an opportunity for established organizations to operate their own top level domain names, expanding TLDs from the current twenty-two extensions (which include .com, .net, and .org), to potentially hundreds more. Almost anything can be registered, and the controlling organization may be as exclusive as it wishes in determining what second-level domain names it will allow (or not) to be attached to its gTLD.
Mark owners should carefully review the list of published gTLD applications as ICANN has no system for notifying mark owners of applications that could violate their trademark rights. If someone has applied for a string that represents a company’s mark, mark owners have two options. First, they have 60 days to submit comments to the application evaluation panels. These comments are not considered formal objections and will not block an application from evaluation, but the panel will evaluate them to determine if action is required. Mark owners also have approximately seven months in which to file a formal objection to an application. The gTLD applicant must respond to the objection within 30 days. The ensuing dispute resolution process will likely last five month, and is governed by WIPO. WIPO will determine if the potential gTLD takes unfair advantage of the objector’s mark, unjustifiably impairs the reputation of the objector, or creates an impermissible likelihood of confusion.
For more information on the new gTLD domain name system, please do not hesitate to contact us.