Potentially significant changes to the operation of the Internet are about to be implemented. The changes will influence how brands are presented on the Internet and there are potential benefits and risks for brand owners.
The process of implementing the new gTLDs has continued since our report of March 2011. As readers may recall, the Governmental Advisory Committee (“GAC”), which is made up of representatives of more than 100 governments and is intended to give governments from around the world a voice in ICANN’s multi-stakeholder community, made it clear to the ICANN Board that it had concerns about some issues needing resolution before the launch of new gTLDs. In response, ICANN’s Board of Directors indicated that they would meet with GAC to resolve the concerns of the Committee’s members.
ICANN said it would, in addition to consulting with the GAC:
- Take into account public comment on the final draft of the Applicant Guidebook, the economic analyses, and the final written proposals regarding issues affecting morality and public order, and make revisions to the guidebook as appropriate; and
- Provide a thorough and reasoned explanation of ICANN decisions, the rationale thereof and the sources of data and information on which ICANN relied.
Based on community feedback and consultations between ICANN's Board of Directors and the GAC, a revised Applicant Guidebook, dated May 30, 2011, was posted by ICANN (the “Applicant Guidebook”).
On June 20, at its Singapore meeting, the ICANN Board approved the introduction of new gTLDs.
The announced timeline specifies the new program will be launched January 12, 2012, at which time applications will be accepted. The initial application window will close on April 12, 2012, with evaluation results to be published within approximately 5 months. Thereafter, there will be a succession of rounds during which applicants may apply for new gTLDs in accordance with terms and conditions set by ICANN but it is not clear when this will take place.
What to do
Brand owners need to start the process of securing their new gTLD, if this is seen to be advantageous, or find a way to deal with third party applications for new gTLDs, or in some cases do both.
Securing a New gTLD
Many parties are said to be interested in securing new gTLDs. Unfortunately, the costs are relatively high. The ICANN evaluation fee is USD $185,000 which must be paid before the process begins. The total costs may be much higher.
Many brands have not yet publicly indicated what steps they intend to take concerning obtaining new gTLDs. An evaluation needs to be undertaken by all aspects of the business in order to decide whether it makes sense to apply. Decision makers should obtain input from marketing including ecommerce, IT, and security, as well as legal since all may be potentially affected.
Consideration also must be given to the potential actions of competitors and other trade-mark owners. For example, if a third party owns the same or similar mark for use with different wares or in another country, the first party to file an application may obtain the gTLD that reflects the mark to the exclusion of others.
An application requires significant detail including responding to all applicable technical requirements. Because of this, time is running perilously short.
Monitoring Third Party Applications
An alternative and perhaps concurrent strategy is to monitor the actions of third parties, including competitors, as they seek to obtain new gTDLs. ICANN will post all applications considered complete and ready for evaluation as soon as practical after the close of the application submission period.
An objection may be based on any one of four grounds, including a "Legal Rights Objection," asserting that the applied-for gTLD string infringes the existing legal rights of the objector. Where formal objections are filed and filing fees paid during the objection filing period, a dispute resolution process applies. An independent dispute resolution service provider will initiate and conclude proceedings based on the objections received.
In addition, once the new gTLD is granted, defensive registrations at the second level (the first portion of the domain name) may also be possible and necessary to help prevent cybersquatting.
In light of the potential advantages and the risks of non-activity, brand owners need to work out a strategy to deal with these issues as soon as possible.