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New Top-Level Domains (gTLDs) Revealed: Many Attorneys Unprepared to Identify and Address New Trademark Risks

Friday, July 13, 2012

By Ashe-lee Jegathesan, Melbourne IT  

On the June 13, 2012 “Reveal Day,” the Internet Corporation for Assigned Names and Numbers released 1,930 applications for new internet top-level domains (84 PTCJ 249, 6/15/12). Dubbed by some as a modern-day gold rush, hundreds of organizations worldwide—from entrepreneurs to big brands and tech giants—have applied for a chance to own and operate top-level domain names to the right of the dot, such as brand names like “.google” or generic items such as “.shop.”

The next step in the domain name land grab is for all brand owners, trademark holders, and attorneys to sift through all the applications to find those that could pose potential trademark or business risks.

However, assessing the potential impact of new gTLDs is proving to be difficult. A new survey by Melbourne IT Digital Brand Services showed that trademark attorneys are still very much in the dark about gTLD objection scenarios. This is new, complicated territory for most, and they are largely unprepared for the massive task of identifying “risky” gTLD applications and addressing the associated risks. The global brand protection consultancy conducted the study to determine the knowledge, preparedness and resource plans of trademark attorneys across the United States. The respondents included counsel from leading Fortune 500 companies, as well as law firms.

Although the majority of the trademark attorneys polled were aware of ICANN's new gTLD program (91 percent), many remain ill equipped to deal with what's next. For instance, there are two primary response mechanisms available to organizations concerned with specific TLD applications: (1) free comment or (2) formal objection. More than one third were unfamiliar with the public comment and objection periods, and only 12 percent had ever participated in the ICANN public comment process before.

The 60-day comment period, which ends Aug. 12, allows anyone to submit a comment about any new gTLD application, free of charge (84 PTCJ 279, 6/15/12). Comments are reviewed by the TLD application's evaluation panel, and should concern only matters related to the evaluation criteria set out in ICANN's Application Guidebook. However, only 36 percent of attorneys indicated that they had read the new gTLD Application Guidebook, showing a clear gap between “awareness” and “understanding.”

Given that very few (12 percent) organizations had participated in an ICANN comment period prior to this round, and most had not read the Guidebook (64 percent), delivering an effective, coherent comment to the ICANN evaluation panel within 60 days will be difficult for many companies. From reviewing the many thousands of pages of application data, to conducting a thorough risk assessment, lodging a public comment or managing a formal objection—the process is likely to require a significant investment in resource and expertise on several fronts.

Those who seek to file a formal objection before the year-end deadline must understand the four grounds for objections and ensure that at least one of these grounds is satisfied:

1. String Confusion Objection—The applied-for gTLD character string is so similar to an existing TLD or to another applied-for gTLD string that user confusion would likely result if both TLDs were approved. Only existing TLD operators or other applicants can object on these grounds.

2. Legal Rights Objection—The applied-for gTLD string infringes the existing legal rights of the objector (for example, a trademark infringement).

3. Limited Public Interest Objection—The applied-for gTLD string is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law.

4. Community Objection—There is substantial opposition to the gTLD application from a significant portion of the community at which the gTLD string is targeted. To be an objector here, your organization has to be established in representing a defined community.

With 54 percent of respondents believing new domains pose a moderate to high risk to their organization's or clients' online brands and trademarks, every organization (whether they applied or not) with a major online brand presence needs to know the options for protecting their online brand and interests.

So, What to Do?
For brand holders, the obvious first check should be for any name that infringes or potentially infringes on a trademark, and to decide whether or not the potential infringement is something that the organization wishes to take issue with. Challenges based on trademark or legal rights infringements will be referred to an independent third party dispute resolution provider, and brands have seven months to file a case. Smart brands should put any names that fall under this category to one side and prepare to file an objection.

However, any concerns with applicants of generic names or concerns that are not primarily related to possible trademark infringement need to be addressed immediately because of the tight 60 day public comment window to do so. This means examining the many applications for generic names such as .store, .hotel, .music, .baby, and so on. Every organization will have a different risk profile and tolerance level, but brands should look first at the generic names that are relevant to their business.

Questions IP attorneys should be asking are:

• Does the applicant have a strong rights management policy?

• Is the applicant's business model sound?

• How does the applicant plan to deal with domain abuse?

• How will this gTLD impact my company's or my client's digital strategy?

There are more than 1,400 unique proposed “strings,” and another 230 which have been applied for by more than one organization, such as .app which has 13 applicants vying for the name.

Trademark attorneys have a daunting task ahead, starting with a crash course in effectively navigating the crucial gTLD comment and objection periods which will help determine which gTLDs will be approved and unveiled beginning in 2013.

Ashe-lee Jegathesan is general counsel at Melbourne IT and oversees the company's gTLD application consulting team. She can be contacted at ashe-lee.jegathesan@melbourneit.com.au

Disclaimer

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