First, an update on .bank. As you may recall, fTLD Registry Services, a coalition of financial associations and institutions led by The Financial Services Roundtable and the American Bankers Association (ABA), filed a community application to operate the .bank gTLD; DotSecure, Inc. filed a standard application for the same .bank gTLD. While the initial examination of DotSecure’s application has not been completed as of the writing of this article (ICANN anticipates that Initial Evaluation results for all applications will be published by the end of August 2013), the International Banking Federation (IBF) filed an objection with the International Chamber of Commerce on March 13, 2012, against DotSecure’s application alleging there is substantial opposition to it from a significant portion of the community to which the .bank string may be explicitly or implicitly targeted. Assuming IBF’s objection passed the “Administrative Review” and DotSecure filed a response, we should have a decision by the time you are reading this article. (To monitor the status of the decision, visit www.tinyurl.com/pendingcase.) If IBF’s objection is successful, this will help clear the way for fTLD Registry’s application.

fTLD Registry’s application, on the other hand, has passed Initial Examination and no objections have been filed against it. Unlike DotSecure, community applicants like fTLD Registry can elect Community Priority Evaluation (CPE), which is expected to begin in mid-September of this year. A “Community TLD Applicant Group” (CTAG) was formed last year to ensure that the interests of the initial community applicants like fTLD Registry are represented in ICANN’s new gTLD program.

Applications that pass Initial Evaluation and do not face any objections or string contention will be eligible to proceed to contracting (which likely will have begun by the time this article is published), with the first new gTLDs delegated soon afterward. Thus, in fTLD Registry’s case, if IBF’s objection to DotSecure’s application is successful, fTLD Registry’s application should proceed to delegation. If IBF’s objection is not successful, however, the two .bank applications will be placed in a string contention set, which will be resolved either through CPE (assuming fTLD Registry elects it) or through an auction.

Interestingly, neither IBF nor any other financial entity has objected to Gexban SAS’ standard application to operate the .banque gTLD. However, Fidelity’s applications to operate .mutualfunds and .ira have been objected to by Prudential Financial, TD Ameritrade, Charles Schwab and the Teacher’s Insurance Annuity; IG Group Holdings’ application to operate .broker has been objected to by TD Ameritrade and Charles Schwab. In both cases, objections are on the grounds that these gTLDs have a limited public interest.

These objections are in line with the Governmental Advisory Committee’s (GAC) Communiqué issued on April 11, 2013 urging ICANN to apply additional safeguards to sensitive strings like .bank that are linked to regulated or professional sectors, are likely to invoke a level of implied trust from consumers, and carry higher levels of risk associated with consumer harm. Such safeguards include mandating operators of these types of gTLDs to require registrants who collect and maintain sensitive financial data to implement reasonable and appropriate security measures and to establish a working relationship with the relevant regulatory or industry self-regulatory bodies, including developing a strategy to mitigate the risks of fraudulent and other illegal activities. The GAC further noted that additional safeguards may apply to a subset of these strings that are associated with market sectors having clear and/or regulated entry requirements in multiple jurisdictions, e.g., the financial sector and .bank. Such additional safeguards include requiring the registry operator to verify and validate the registrant’s authorizations, charters, licenses and/or other related credentials for participation in that sector, as well as conducting periodic post-registration checks to ensure the registrant’s continued validity and compliance with the appropriate regulations and licensing requirements.

Banking institutions that have registrations for any of their trademarks should be considering whether to record them with the Trademark Clearinghouse (TMCH). The TMCH allows brand owners to submit their trademark data into one centralized database prior to and during the launch of new gTLDs. The TMCH helps streamline the process of pre-registering second level domain names incorporating their marks if and when .bank or any of the other financially-related gTLDs go live. In addition the Trademark Clearinghouse provides a Trademark Claims service that warns trademark holders of possible infringements.

The TMCH also streamlines the process for using one of the new rights protection mechanisms (RPM) available to trademark owners whose marks are being infringed in the new gTLDs. The Uniform Rapid Suspension (URS) System complements the existing Uniform Domain-Name Dispute Resolution Policy (UDRP) by providing an even cheaper and faster process for resolving disputes involving the most clear-cut cases of infringement. However, unlike the UDRP which allows for transfers of domain names found to have violated the policy, the only form of relief available under the URS is suspension of the domain name at issue.

Takeaway

“.bank” and other financially-related gTLDs are now on the horizon. If you have not already done so, give serious thought to recording your trademarks with the Trademark Clearinghouse to take full advantage of the new rights protection mechanisms being made available to trademark owners in these gTLDs.