In June 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a program to expand the Internet's domain name system by introducing new generic top-level domain names. The new gTLD application period previously closed, but ICANN recently released the list of over 1900 new gTLD applications. Release of the list is significant as it initiates the public comment and formal objection periods, and businesses and groups should review this list to determine whether any new gTLDs impact their operations. Several technology attorneys at Polsinelli Shughart have been actively involved in the process, including assisting Dot Registry, LLC, with its community based applications for .INC, .LLC, .LLP and .CORP. Dot Registry has worked closely with many Secretary of State's offices (including Delaware) to develop registration policies that call for transparency in reporting and annual verification. A copy of the Delaware Secretary of State's letter to ICANN can be found here.
Public Comment and Formal Objections
For a 60-day period following the release of new gTLD applications on June 13, trademark owners (whether or not they are gTLD applicants) may submit comments regarding approval of a particular new gTLD application. Comments received during the public comment period will be evaluated for relevance, verified for accuracy, and analyzed for meaningfulness. The information will then be used by evaluation panels for consideration in approval of the gTLD application.
Trademark owners have approximately seven months following the release on June 13 to file a formal objection to an application. Several types of objections are available to be filed. Some formal objections are only available to gTLD applicants while others are available regardless of status as an applicant. The grounds for filing a formal objection are:
- Legal Rights
- "String" Confusion
- Limited Public Interest
- Community Interest
Please be aware that there are fees associated with filing formal objections, and these fees may differ based on the grounds for objection.
Forthcoming Trademark Clearinghouse
Protecting your trademark and other intellectual property rights is always a top priority, and the eventual launch of the new gTLDs is no exception. In addition to the comment and objection mechanisms, ICANN has announced a forthcoming trademark clearinghouse. The trademark clearinghouse will eventually allow trademark owners, licensees, and assignees to submit documentation of ownership that will be used to support new gTLD rights protection mechanisms.
What Should You Do?
Every business or group should check the list of new gTLD applications to see if any of the applications are the same or similar to your trademark(s) or that are generic for your industry (e.g., .bank, .hospital, .app). Once you have searched the list, if there are applications that cause concerns for your operations, you should consider submitting a public comment regarding the application and determine whether you have any grounds to file a formal objection keeping in mind the relevant timeframes.