DLA Piper: ICANN reveals all: what should brandowners do now?

DLA Piper: ICANN reveals all: what should brandowners do now?

By John Wilks and Damian Herrington

The Internet Corporation for Assigned Names and Numbers (ICANN) announced details of the applications it has received for new generic Top Level Domains (gTLDs). ICANN has said a total of 1,930 applications were received, a number in excess of most peoples' initial expectations.  

These are unchartered waters for the internet domain name system and the dispute resolution procedures which support it. While procedures for resolving conflicts and protecting certain rightsholders have been provided for, it remains to be seen how these will work in practice. Given the uncharted territory, high levels of investment involved and the messy start to the procedure (see our previous alert), future disputes between applicants, other rightsholders and/ or ICANN seems inevitable. 

The Reveal Day marks the beginning of a lengthy period of evaluation and potential objections for the gTLD applicants, which is expected to last at least 9 months. All brandowners (whether they applied for a gTLD or not) will no doubt be keen to check whether any of the domains applied for are confusingly similar to their own brands, and to take appropriate action if that is the case. They should also consider their strategy for second level domains within some of the new gTLDs. We set out below some pointers for what brandowners should think about doing, and when they should be doing it.

Check out the list (as soon as possible)

The list can be accessed here. It is important for brandowners to review it as soon as possible, and determine:

  • Are any domains similar to your brands which you might want to oppose?
  • Are there applications for generic terms which your industry might want to oppose?
  • Are there applications for 'open registry' gTLDs (ie gTLDs intended to be open for third parties to register second level domains within, eg Barcelona football club applying to the owner of '.football' to register 'barcelona.football') for which you might want to block or register second-level domains?

From a brief review of the list, it appears that main categories of applicants include:

  • Brandowners from industry sectors particularly targeted by scams and fraud, such as financial services
  • Technology brandowners (eg Google, Apple, Samsung, though interestingly not Facebook or Twitter)
  • Speculators intending to make a profit from running open registries based on truly generic terms (eg ".app", ".book" and ".law" have been applied for by an entity called Straat)
  • Community applications, particularly those made on behalf of cities (eg .paris, .berlin and .madrid)

Consider whether to file an objection (deadline: around mid-January 2013)

There are four potential grounds for objections, which are summarised in the table below.



As can be seen from the above, the objection is filed with one of three dispute resolution providers (DRS providers) rather than ICANN. Objections will result in either the application prevailing and therefore proceeding to the next stage, or the objection prevailing, so the application will be rejected. Detailed rules on the objection processes can be found on the DRS providers' websites. 

Keep up to date of others' objections (from now until around mid-January 2013)

Details of objections filed will be published on the DRS providers' websites and later by ICANN. This will allow other interested parties to lend support to existing objections, particularly community objections. 

Register your marks in the Trademark Clearinghouse (expected to be available from Autumn 2012)

To help deal with the potential trademark issues of gTLD operators selling second level domains (ie the word to the left of the dot) to third parties, ICANN is setting up the Trademark Clearinghouse, an online database which will serve as 'a central repository for information to be authenticated, stored, and disseminated, pertaining to the rights of trademark holders'. Registering in the Trademark Clearinghouse will enable brandowners to take full advantage of the Sunrise Period and Trademark Claims Service (described below) which gTLD owners must adopt as a minimum in connection with their gTLD launch. 

Use the Sunrise Periods and Trademark Claims Service (first sunrise periods likely to be around February 2013)

Each gTLD registry must adopt the following as a minimum in connection with their gTLD launch:

  • a Sunrise Period (an opportunity for eligible rightsholders to register (second level) domain names within the TLD for 30 days before its launch)
  • a Trademark Claims Service (a service providing notice to prospective domain registrants of potential conflicts with existing trade marks and to trademark owners of conflicting domain registrations for at least 60 days following launch) 

Brandowners should formulate a strategy for which second level domains they would like to register, and which they would file objections to, and use the Sunrise Period and Trademark Claims Service to support that strategy.

Consider objecting to Second-Level Domains (first second level domains likely to be registered around March 2013)

An Uniform Rapid Suspension Procedure (URS) will be set up and used in order to help resolve clear cases of cybersquatting in second level domain registrations. The URS is effectively an expedited and streamlined version of the UDRP, which many will be familiar with as the existing policy used to determine top level domain disputes such as those involving .com domains. 

The URS will sit alongside the UDRP proceedings and court proceedings (eg for trademark infringement) which a brand owner could use in order to contest a domain registration.

This information is intended as a general overview and discussion of the subjects dealt with. The information provided here was accurate as of the day it was posted; however, the law may have changed since that date. This information is not intended to be, and should not be used as, a substitute for taking legal advice in any specific situation. DLA Piper is not responsible for any actions taken or not taken on the basis of this information. Please refer to the full terms and conditions on our website. 

Copyright © 2012 DLA Piper. All rights reserved.

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