At this juncture, organizations may still have some opportunities to influence which new gTLDs are delegated (top-level enforcement), although the windows for these opportunities are rapidly closing. In addition, as the number of spaces in which to register second-level domains will likely increase exponentially over the next few years, all organizations, whether or not they are otherwise participating in the new gTLD program, will need to determine how to expand their domain name portfolios with defensive registrations and how they will utilize other rights protection mechanisms (RPMs) to protect their brands.
Several relevant deadlines are rapidly approaching. For example:
- The Governmental Advisory Committee (GAC) has set an internal deadline of February 8, 2013 for its members to identify new gTLD applications meriting GAC Advice (top-level enforcement opportunity to advocate for national governments to express concerns regarding problematic new gTLDs).
- The Trademark Clearinghouse is estimated to begin validating trademarks in February 2013 (second-level enforcement opportunity to provide some protection for brands within domain names registered in new gTLDs).
- The New gTLD Objection Filing Period deadline is March 13, 2013 (top-level enforcement opportunity to initiate a proceeding to block problematic new gTLDs, with appropriate standing required).
- The first new gTLDs could go live as early as June 2013, thus requiring planning in the very near future for participation in sunrise periods and other second-level enforcement efforts.
Preparing to take action before any one of these deadlines will take a significant amount of time and planning, and thus, organizations will need to make decisions quickly if they are to take advantage of the corresponding opportunities to protect their brands.
Please find below a brief explanation of each of these opportunities.
One potential form of new gTLD enforcement is advocating to the Governmental Advisory Committee that it should issue “GAC Advice” against new gTLDs of concern, such as those that monopolize key industry terms or those that are likely to attract cybersquatting. GAC Advice represents a consensus position among nations (meaning that no nation is opposed) that a particular new gTLD application potentially violates national law or will raise national sensitivities, thus creating a strong presumption that the application should not be approved by the ICANN Board of Directors unless it is first remediated. The GAC has set an internal deadline of February 8, 2013 for its members to identify new gTLD applications meriting GAC Advice.
Applications identified pursuant to this internal GAC deadline will not be disclosed publicly. However, they will be the subject of interim GAC discussions and meetings leading up to the ICANN Meeting in Beijing on April 7-11, 2013. For such reason, stakeholders will have to act quickly if they wish to appeal to their national GAC representatives with arguments that GAC advice should or should not be issued against any particular application.
In this vein, we recommend that interested parties review the list of new gTLD applications immediately to identify any that may raise concerns if they were delegated, and if so, to begin advocating to relevant GAC representatives as soon as possible so that they can notify the entire GAC about the problematic applications before their internal February 8, 2013 deadline.
The Trademark Clearinghouse (TMCH) will be a centralized database of trademark registrations where rightsholders will be able to submit their eligible marks prior to the launch of any new gTLDs. The data submitted to the TMCH will support two key processes in the new gTLD program: the Sunrise service and the Trademark Claims service. The Sunrise service is a period of at least 30 days which must be offered by all new gTLD registries during which eligible owners of marks in the TMCH will be able to register domain names matching their marks before domain names will be offered to the general public. The Trademark Claims service is a notification service that: (a) provides notice to a potential domain name registrant that a domain name registration matches a mark in the TMCH; and (b) if the registration is completed, despite this notice, provides notice that the registration has taken place to the owner of the mark during at least the first 60 days of the general registration period of any new gTLD.
ICANN has recently stated that it expects the TMCH to begin accepting mark submissions in February 2013. The TMCH will thereafter remain open throughout the delegation of new gTLDs, which could be as early as June 2013 and stretch into early 2015. The operator of the TMCH has confirmed that submissions will cost approximately $150 per listing per year. As the submission period will begin very shortly and the first Sunrise period will likely occur within a few months under the current timeline, trademark owners should review their portfolios to determine priorities for TMCH submission.
Given the size of the applicant pool and the imminent launch of some new gTLDs, brand owners should also start identifying new gTLDs in which they may want to register their brands. Once these target registries are identified, it will be important to track the status of those applications to ensure that the sunrise window is not missed.
Another avenue for new gTLD enforcement is filing a formal objection. A formal objection is an alternative dispute resolution process that is run by various third-party providers that engage a panel of qualified experts in the relevant subject area to review submitted documents. There are four grounds for objecting to a new gTLD application: string confusion, legal rights, limited public interest, and community, with each having different qualifications for standing.
Under the proposed schedule, the formal objection filing window will close on March 13, 2013. In light of this impending deadline, interested parties should begin assessing their ability to voice objections and on what grounds, as each one has specific substantive and standing requirements. Organizations lacking standing, or that would prefer to pool resources for objections, may wish to consider coordinating objection efforts with industry groups, which will likely take significant time to galvanize. Moreover, drafting the required statements and compiling evidence will also likely take several weeks. Accordingly, interested parties should prepare for this process as soon as possible.
Conclusion and Next Steps
In light of the impending enforcement deadlines discussed above, intellectual property owners and other interested parties should immediately begin considering how new gTLDs can impact their organization, particularly in regard to securing branded domain names in relevant new gTLDs. If a particularly enforcement option is chosen, organizations would be wise to begin taking the necessary steps as soon as possible.