ICANN’s Domain Name Review: First gTLD Comments Due August 12, 2012

[Link: ICANN Unveils New gTLD Applicants for Brand Owner Review – Allen Matkins Leck Gamble Mallory & Natsis LLP]

The Internet’s naming system is about to get a lot more complicated, and that’s a big deal for brand owners. Law firm Allen Matkins explains why in this video.

Key takeaways:

  • Formal objections can be filed in four categories: legal rights, limited public interest, community, and string confusion
  • Brand and trademark owners should review the list for names that are confusingly similar to their marks
  • Businesses can also submit comments on a specific application (an “evaluation panel comment”), for example regarding the applicant’s technical or financial capability to run a domain name registry

If you want to file an objection, you’ve got until mid-January 2013. But if you’d like to submit an evaluation panel comment, you’ll need to act fast: the deadline is August 12, 2012.

For further reference, read:

TLD Transformation Underway (Baldwins l Intellectual Property):

“A rapid transformation of the internet landscape is underway. By ‘Reveal Day’, 13 June 2012, ICANN (the Internet Corporation for Assigned Names and Numbers) had received 1,930 applications for global Top-Level Domain names (gTLDs). While a few of these applications are for the same name, so that the actual number of new gTLDs will not be quite as high as 1,930, there will still be an enormous increase of gTLDs from the mere 18 that are currently used worldwide (the most common of which are .com, .org and .net).” Read on>>

ICANN Reveals the Applications for the New gTLD’s: It’s Time for Brand Owners to Act (Allen Matkins Leck Gamble Mallory & Natsis LLP):

“The addition of potentially over 1,400 new gTLD’s will greatly expand “real estate” on the Internet and could affect significantly the way that companies communicate with their clients. Brand owners should review the list of gTLD applications for strings that may be confusingly similar to their trademarks or domain names, and all businesses should review the list to determine whether a competitor or other party has applied for a general term in their field that may be important to their marketing, brand protection or other business strategies.” Read on>>

The “Dot-Brand” Explosion: What You Need To Do Now – Or: How To Make Sure Your Name Or Trademark Doesn’t Become A “.Sucks” Web Site (Dickinson Wright):

“The initial application window recently closed. The list of applications offered a few surprises, a number of omens for the future – and some important action items for brand owners who did not apply for a gTLD this time around… One surprise was the sheer number of applications. Originally, ICANN was anticipating 500 or so. In the end there were almost 2,000 (at $185,000 apiece!) The unexpected volume slowed down the application process, and will surely slow the review and approval process even more.” Read on>>

TLD Applications at a Glance (Loeb & Loeb LLP):

“The more than 1,900 applications for Top-Level Domains (TLDs) submitted in the opening round of ICANN’s (the Internet Corporation for Assigned Names and Numbers) New Top-Level Program reveal a fascinating profile of the industries, companies, and constituents that foresee opportunity in this program (as well as those that have taken a pass) and what the market will look like, at least in its infancy.” Read on>>

ICANN’s New gTLDs Program: Disputes, Comments and Objections (Mintz Levin):

“If someone has applied for your brand or trademark, or if you oppose a gTLD that targets a community in which you are involved, you can formally object to that application. Filing an objection gives you the opportunity to have your objection considered by the panel reviewing the application. ICANN has established four bases for objecting to an application, which then initiates a dispute resolution procedure. Administered by three different dispute resolution bodies, the specific procedure for submitting a formal objection under a specific basis is outlined by each body.” Read on>>

ICANN Publishes List of Applications in gTLD Expansion Program (Orrick, Herrington & Sutcliffe LLP):

“The current deadline for filing a formal objection is January 13, 2013. If an application is approved and any formal objections are overcome, the new gTLD will be delegated to the applicant. ICANN expects to begin delegating gTLDs to applicants after the deadline for filing a formal objection. ICANN has announced it has plans to open a second round of gTLD applications in the future. However, that will likely be years from now, as the present round of expansion still must be completed and evaluated.” Read on>>

Internet Expansion To Create Opportunities, Concerns For Brand Owners (McAfee & Taft):

“We encourage brand owners to review the list of gTLDs involving marketing, sales, information systems administration and trademark counsel perspectives. Many of the new gTLD owners are likely to open their gTLDs to the public. An early application and monitoring strategy will help brand owners secure desired domains and prevent the more problematic uses. If a domain name problem arises under a new gTLD, various dispute resolution mechanisms have been set forth by ICANN. Please feel free to contact us to obtain more information.” Read on>>

gTLDs – Application Process Derailed; ICANN Seeks Solutions From Internet Community at Prague Meeting (Loeb & Loeb LLP):

“Having just weathered an embarrassing six-week delay in its gTLD application process, it took ICANN less than a week to come off the rails again. Over the past weekend, and just before its semi-annual meeting in Prague, ICANN announced that it was suspending digital archery, the ‘contest’ by which it was to sequentially batch the gTLD applications for evaluation and launch. Further, ICANN made it clear during a press conference and meetings yesterday in Prague that it is no longer even sure whether to batch the applications and, if it does not, how it will organize the process.” Read on>>

List of Applied-For New gTLDs Released – Should You File an Objection? (Sheehan Phinney Bass + Green PA):

“The objection period for new gTLDs began on June 13, 2012, when the applied-for domain names or strings were posted, and is intended to remain open for approximately seven months (i.e., until January 2013). After the objection filing period closes, all objections received will move through the dispute resolution process, estimated to take approximately five months, in the absence of extraordinary circumstances.” Read on>>

Protecting Your Rights: New gTLD Applications (Polsinelli Shughart PC):

“Trademark owners have approximately seven months following the release on June 13 to file a formal objection to an application. Several types of objections are available to be filed. Some formal objections are only available to gTLD applicants while others are available regardless of status as an applicant.” Read on>>

Who’s in at the Top Level Domain (Baldwins l Intellectual Property):

“The luxury brands such as Gucci and Hermes are there, as are the car manufacturers such as Audi, BMW, Chevrolet, Bugatti, Ford, Kia, Toyota and Jaguar, among others. Sony, Apple and Samsung are there in the technology world and in the financial arena we see Bloomberg, Barclays Bank, and National Australia Bank. Macys has applied but Harrods hasn’t. Zara, Old Navy and Walmart are in, but none of the main antipodean department stores have applied.” Read on>>

New gTLD Applications Revealed: What Comes Next? (Reed Smith):

“The fact that there were 1930 applications—each carrying a $185,000 application fee to ICANN—does not mean that there will be 1930 new gTLDs. Many gTLDs, such as .HOTELS, .INC, and .SHOP had multiple applicants, and after an auction is conducted—with some of these gTLDs going for millions of dollars—only one applicant will survive. In fact, 230 proposed gTLDs had multiple applicants and those 230 gTLDs accounted for approximately 750 of the applications.” Read on>>

ICANN Reveals Applied-For gTLD Strings (Snell & Wilmer L.L.P.):

“Mark owners further have the opportunity to protect their marks through ICANN’s Trademark Clearinghouse. For a fee, mark owners can register their marks in the Trademark Clearinghouse in order to receive notice of the registration of a domain name that includes the registered mark. In addition, domain name registrants will receive real-time notice that their attempted registration matches a Trademark Clearinghouse record.” Read on>>

Number of gTLD Applications Nearly Quadruples Expectations (Armstrong Teasdale LLP):

“For perspective, there are currently only 22 active gTLDs. ICANN’s announcement means that the number of available domain names may increase by a factor of nearly 100; thus making domain name protection even more challenging.” Read on>>

How to Feel About the “Big Reveal”: Roundup on the Land Rush for New gTLD Applications (Bracewell & Giuliani LLP):

“In a veritable clash of the techy titans, several large name entities have all applied for a number of identical strings, including .app (the most sought after extension by all except, interestingly, Apple), .blog, .cloud and .docs. Other popular strings include .art, .book, .home, .inc, and .shop, with additional heavy hitting industries including those in the fields of automobile, banking, insurance, retail, manufacturing and pharmaceuticals.” Read on>>

The Internet: ICANN’s New gTLD Program (Ladas & Parry LLP):

“Trademark owners, whether or not applying for their own .brand gTLD, will be impacted by this development and should ensure that the new gTLDs will not infringe their legal rights or be used in a way that will harm their brand or business activities.” Read on>>

New Generic Top-Level Domain Names: What Brand Owners Need to Know (Katten Muchin Rosenman LLP):
“For trademark owners, the legal rights objection appears to be the most pertinent. Under a legal rights objection, a party may object if ‘the potential use of the applied-for gTLD by the applicant takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark.’ In other words, a legal rights objection would allow a trademark owner to oppose a new gTLD application where the applied-for gTLD would infringe on the trademark owner’s existing rights.” Read on>>

New “Generic” Top-Level Domains Need a New Name (Winthrop & Weinstine, P.A.):

“… I continue to wonder about the viability of new TLDs on a practical level. For instance, did you know that .jobs has been a TLD since 2005? Have you ever surfed a .jobs website? How about a .pro site? Been to a .coop site? I didn’t think so. These generic TLDs have been around a while, and I assume each has made its own marketing push, but it seems to me that none of them have taken off. Perhaps the new TLD effort will finally shake us all out of our .com paradigm, but it is probably going to take major marketing efforts to do so.” Read on>>

ICANN Releases List of Applicants and Proposed New Top-Level Domains (Reed Smith):

“This program has come under considerable criticism… Despite the concerns expressed by many brands and marketers, ICANN is proceeding with plans that may result in new domains as early as the first quarter of 2013.” Read on>>

The List of gTLD Applicants: A Breakdown (Mintz Levin):

“Perhaps not surprising given its pre-Reveal Day announcement, Google was one of the largest sources of applications, with Amazon on its heels. Google submitted 101 gTLD applications (paying $18 million in filing fees alone) through the company’s Charleston Road Registry domain name subsidiary. Amazon filed 76 of its own applications (paying approximately $14 million in filing fees).” Read on>>

gTLD Application Reveal: Strategies to Protect Your Rights and Brands (Banner & Witcoff, Ltd.)

“Generally speaking, the objection process is an inter partes process adjudicated by arbitration centers. In addition to objections, public comments regarding applications can now be submitted. The current version of the official applicant guidebook for the entire new gTLD process is available…” Read on>>

Domain Names Go Creative: Will We Soon See Dot-Poker? (Ifrah Law):

“An interesting development related to the world of online gaming is that four groups applied for domain names that would end in ‘.poker.’ The companies that applied for the ‘.poker’ suffix are U.S.-based Binky Mill, LLC and Dot Poker, LLC as well as European-based dot Poker Limited and Afilias Domains No. 5. Limited.” Read on>>

ICANN’s June 13 “Reveal Day” – 40 Percent of Applications For Same Domains; Comment and Objection Periods Begin (Loeb & Loeb LLP):

“The new gLTD applications will be ‘batched’ into groups for processing and evaluation – 500 in the first batch, 400 in subsequent batches, according to the latest information from ICANN. Placement in batches will be determined by (1) batching preference, (2) secondary timestamp score, (3) geographic location, and (4) contention among identical and ‘similar’ applications.” Read on>>

ICANN Publishes List of New gTLD Registry Applications (Morgan Lewis):

“In total, ICANN received 1,930 applications for 1,700 new gTLD strings intended for use by various parties (i.e., general consumers, specifically identified Internet and/or geographic communities, individual corporations and their customers, and non-English, foreign-language speakers).” Read on>>

Reveal Day for New Top-Level-Domains (Field Law):
“Some brand owners have elected to go with generic applications – for example, both Safeway and Walmart applied for .GROCERY… Internationalized domains are part of the list, including 삼성 (That’s SAMSUNG in Korean).” Read on>>

What’s the Deal with the “Big Reveal”? Getting Exposed to the List of New gTLD Applicants and Applications (Bracewell & Giuliani LLP):

“Whether or not you find yourself amongst the estimated 2000+ Applicants, the possibility remains that, amongst the host of other applications, another person or entity has pursued a string that is confusingly similar to your brand or, at the very least, is relevant to your particular industry or field and, as such, may become a desirable registry for your future domain names.” Read on>>

Happy Reveal Day! The List of New gTLD Applications Is Now Available (Mintz Levin):

“There are most likely many expected gTLDs that are not on the list but, at the outset, it appears that there are no applications for .FACEBOOK, .COKE, .PEPSI or .DISNEY. The listing reflects that the world of politics is merging with the domain name world. United TLD Holdco applied for .DEMOCRAT and .REBUPLICAN. Interestingly, the Republican State Leadership Committee, Inc. applied for the gTLD .GOP, but there is no pending application for .DNC (Democratic National Committee).” Read on>>

Reveal Day Popularity Contest: The Most Common gTLD Applications (Foley Hoag LLP):

“The applied-for strings appear to be a pretty even mix between .brands and .generics, with a few geographic terms thrown in for good measure. As expected, heavy-hitters like Google, Amazon, Microsoft, Yahoo!, and Apple (but surprisingly not Facebook or Twitter!) are on board with varying numbers of applications each, and some .generics will be very hotly contested. Indeed, the list of the most common .generic applications is illuminating…” Read on>>

Has Someone Applied to Register Your .BRAND? Top Five Things You Need to Know (Mintz Levin):
“Having federally-registered trademark rights will offer valuable protection as the new domain name s system becomes a reality. To the extent that you are using or plan to use a trademark or service mark in connection with the offering of goods or services and have not yet applied for federal trademark protection, you should consider doing so now. A federal trademark registration provides many valuable benefits.” Read on>>

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