Member Article

After several delays, ICANN has published the list of generic top level domain (“gTLD” or “string”) applicants and the gTLDs they have applied for. This new initiative from ICANN will allow a wide variety of entities to act as registrars for gTLDs of their choosing. Once these systems are up and running, consumers will be able to access websites not only ending with .com or .net, but also ending with .NETFLIX, .AOL, and .PIZZA. The list can be found at:http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en.

One gTLD that brand owners will want to watch is .SUCKS (applied for by 3 applicants). It is easy to imagine a brand or company’s detractors applying for second level domains such as “yourbrand.sucks.”

By the Numbers

A rough count shows that ICANN received 1,930 applications for approximately 1,410 new gTLDs (resulting in more than US$357 million in fees to ICANN). However, due to applications for overlapping strings, there are fewer unique gTLDs than applicants. If all of these result in new gTLDs, it will be a huge expansion from the current 21 gTLDs and nearly 250 country code TLDs.

The applications can be classified as:

• Public – available to any registrant, similar to how the .com and .biz gTLDs operate
• Community – restricted to a defined community, similar to how the .edu and .travel gTLDs operate
• Geographic – a specific type of a community limited by geography, such as .boston or .africa
• Closed – use restricted to the applicant or with the applicant’s permission, such as .brand

Approximately 84 of the new gTLD applications are designated as “community applications,” and approximately 66 of the applications are designated as “geographic” applications.

Amazon and Google appear to be two of the most prolific applicants, applying for 76 and 101 different strings, respectively, either directly or through proxy entities. While some of these applications cover brands, others cover generic names, such as .author, .blog, and .music.

The gTLD with the most applications is .app, with 13 applicants attempting to obtain it. Under the rules promulgated by ICANN, any community-designated application would be given priority. If there are no community-designated applicants, the string will presumably go to auction to see who receives the right to administer the gTLD. Other hotly contested terms are:

• .inc (12 applications)
• .home (11 applications)
• .art (10 applications)
• .blog (9 applications)
• .book (9 applications)
• .llc (9 applications)
• .shop (9 applications)
• .design (8 applications)
• .movie (8 applications)
• .music (8 applications)
• .cloud (7 applications)
• .news (7 applications)
• .store (7 applications)
• .web (7 applications)

There appear to be about 230 proposed new gTLDs for which at least two applicants applied, involving approximately 750 total applicants.

Of the proposed new gTLDs, 106 strings (about 5 percent) are in non-Roman characters. The alphabets used for new gTLDs include Arabic, Chinese (simplified and traditional), Cyrillic, Devanagari (Hindi and Nepalese), Hebrew, Japanese and Korean.

Brand Owners - Keep in Mind

Businesses and brand owners should review the list as soon as possible to identify any applications which may be identical or similar to their brands, or otherwise of concern for their businesses. A gTLD for a generic term that could be construed to cover a product or service significant to your business may be of concern, and it may be of even greater concern if the applicant is a key competitor.

An interactive listing of the proposed new gTLDs is available at: http://gtldresult.icann.org/application-result/applicationstatus/viewstatus. This page will allow you to search and organize the listings, as well as to access the non-confidential portions of the individual applications. If the proposed string is for a generic term that potentially affects your business, the responses to questions 18-20 will help you determine whether you should file a comment or objection to the proposed new string.

Window for Public Comments

Public comments about any of the proposed strings may be filed during the next 60 days (until August 12, 2012) at: https://gtldcomment.icann.org/comments-feedback/applicationcomment/login. ICANN has not established an objection process for the “privatization” of a string for a generic term. If you have such an objection, it may be possible to lodge your objection as a comment. You can determine whether an applicant intends to privatize a new string by its response to question 18 in the application.

Legal Rights Objections

Where a proposed string is identical or similar to an existing brand, brand owners will have the opportunity to bring a legal rights objection through WIPO in the next seven months, although the exact deadline for filing such objections has not yet been announced. No objections will be heard until the objections window has closed.

In addition, brand owners will also want to consider registering their brands in the Trademark Clearinghouse, http://newgtlds.icann.org/en/about/trademark-clearinghouse#implementation, which will give them advanced warning of any attempt by anyone to register that brand at the second level of any of the new gTLDs (e.g., yourbrand.blog). All brand owners will be able to object to abusive registrations/use by others at the second and subsequent level domain names registered at any of the new gTLDs using a process similar to the UDRP. No opening date for the Clearinghouse has yet been set. The costs of registration have not yet been determined but are expected to be less than US$150 per brand, with an annual renewal fee that is a percentage of the registration fee.

Community Objections

ICANN has not articulated a standard for what constitutes a “community.” It is determined by each applicant. If a proposed gTLD purports to represent a community (see responses to questions 19 and 20 in the application) and a significant portion of a relevant community objects to the application, an objection may be lodged by an “established institution” associated with the community.

For more information on the Trademark Practice Group and its members, you may visit the Trademarks, Advertising and Brand Management page of the Haynes and Boone, LLP website. If you would like assistance with your gTLD or objecting to another's gTLD, please contact one of the following lawyers.