We are pleased to provide updates from the recent ICANN meeting in Dakar, Senegal. Steptoe partner Brian Winterfeldt attended this meeting on behalf of ICANN’s Intellectual Property Constituency, and was also seated as a Councilor to ICANN’s Generic Names Supporting Organization. Sessions during the ICANN meeting revealed many new additional details concerning the Trademark Clearinghouse and the application process itself. Please find below a summary of the most relevant updates for trademark owners.
The Trademark Clearinghouse
One of the most crucial aspects of the new gTLD program for brand enforcement and rights protection is the Trademark Clearinghouse, which a private entity shall operate and for which ICANN has just recently issued an RFP:
ICANN envisions the Trademark Clearinghouse to function as a worldwide database of trademark holders’ marks, protecting mark holders from, and notifying mark holders of, potentially infringing second-level domain registrations within the new gTLDs. There are, however, several outstanding issues with regard to the logistics of how the Clearinghouse will actually function. With this in mind, ICANN has called for the creation of the Implementation Advisory Group (IAG), to be formed in November 2011. Policy questions the IAG will consider will include: how the sunrise period shall operate; who will send possible infringement notices; receipt verification; database redundancy; and the technical protocols by which trademark data shall be exchanged.
The Extended Evaluation Process
The extended evaluation period for applications which, for one reason or another, have failed the initial evaluation, is now scheduled to run from December 1, 2012 to April 30, 2013. It is important to note, however, that applications cannot be materially amended during this period, though applicants will have the ability to clarify aspects of their application. The need to participate in extended evaluation may significantly delay entry into the DNS root, and thus new gTLDs undergoing extended evaluation may not be live until well after other TLDs have become operational. However, if ICANN has determined that additional information and clarifications are required before an application can be approved, utilizing the extended evaluation option is likely preferable to withdrawing from the application process.
Objection Timing & Strategy
The timely filing of objections to others' applications and responding to objections to one's own gTLD application are integral parts of the application process and considerations for all applicants. ICANN recently specified that the objection period will run from May 1, 2012 to December 1, 2012 thus, the objection period will extend for approximately two weeks after the initial evaluation period has ended and evaluation results have been posted. This information further refines the general application schedule previously distributed by ICANN, thus allowing potential applicants and objectors to plan accordingly.
Batching of Applications
ICANN insiders have estimated that ICANN may potentially receive up to 1000 or more new gTLD applications during the application window. As the capacity of ICANN’s evaluation panels is limited to approximately 500 applications during one evaluation period, ICANN is thus examining how to place applications into processing batches. Although the final batching method has not yet been determined, ICANN specified during the Dakar meeting that the date of submission during the application window will not be a factor (i.e., there is no batching advantage to submitting earlier in the application window). In addition, ICANN stated that it is unlikely a lottery system will be used. One possible method is to allow applicants to self-select their batching order by opting in or opting out of being placed in the first evaluation batch. ICANN expects to provide more information on this important issue shortly.
The TLD Application System (TAS)
An online demonstration of the TAS electronic portal through which all new gTLD applications must be submitted is now online: http://www.icann.org/en/announcements/announcement-23oct11-en.htm. The TAS system is the only method of communication with ICANN during the application process and knowing its ins and outs and drawbacks and benefits can be crucial to properly submitting a new gTLD application.
Recommended Next Steps in the New gTLD Planning Process
With the new gTLD application window opening in less than three (3) months, all potential applicants must move quickly, and those who are not applying need to develop sensible rights protection strategies to ensure their marks and brands are not diluted or infringed upon in this new Internet landscape.
Between now and the opening of the application period on January 12, 2012 additional updates to the new gTLD program are likely to take the form of refinements to certain outstanding issues, rather than major substantive changes. As such, we recommend all parties interested in the new gTLDs who have not yet decided whether they are going to submit an application to make their final decisions as soon as possible. To assist with the critical decision regarding whether or not to apply for one or more new gTLDs, parties should:
- Engage counsel who are experts in Internet governance and ICANN matters to assist with navigating their new gTLD strategy;
- Create a cross-functional team of stakeholders to make business decisions regarding the program, including input at the executive level;
- Ensure that relevant stakeholders are aware of the program, its opportunities, the final timeline, and potential risks of not participating; and
- Assess budgetary, staffing, and technical resources required to apply for a new gTLD and operate a registry.
Whether or not they are applying for their own new gTLDs, enforcement will also be a key concern for all brand owners. Thus, before the application period commences, organizations are strongly encouraged to:
- Evaluate their current trademark and domain name portfolios, and assess enforcement priorities;
- Develop an updated enforcement strategy for before the application period opens, during the application period, and after the new gTLDs are operational; and
- Allocate budget and personnel to address new enforcement needs in 2012 and beyond.