Today is ICANN’s Reveal Day
for the new generic top level domain (gTLD) applications. Common gTLD’s include .com, .net, .org, and country-specific
domain name extensions such as .uk (United Kingdom) or .ca (Canada). The new gTLD extensions are referred to as
“strings.” ICANN published its list of
applied-for gTLD strings here. You can download a PDF version of the list here. You can search for strings of interest here.
Now
that the gTLD application list has been published, a public review period has begun,
including a 2-month comment period and a 7-month formal objection period. ICANN permits a few objections anyone can
raise(applicants and non-applicants).
The
“Legal Rights Objection” will likely be the most useful and relevant for
purposes of brand protection. Once a
Legal Rights Objection is filed, an independent panel of one or three experts will
decide whether the applied-for gTLD string would be likely to infringe an
existing trademark, intergovernmental organization name, or another acronym in
which an entity has a cognizable right.
The
panel will decide whether the applied-for gTLD takes unfair advantage of the
objecting party’s mark or name, whether it unjustifiably impairs the
distinctive character or reputation of the objecting party’s mark or name, or
whether it creates a likelihood of confusion with the objecting party’s mark or
name. To make these determinations, the
panel looks to various non-exclusive factors, including, whether the
applied-for gTLD is identical or similar in appearance, sound or meaning to the
objecting party’s mark or name, and whether the intended use of the applied-for
gTLD will create a likelihood of confusion with the objecting party’s mark or
name as to the source, sponsorship, affiliation, or endorsement of the gTLD.
Trademark
and brand owners should take the time on the front end to challenge any gTLD
strings that may be encroaching on their trademark or brand names. We think that the effort put into challenging
objectionable gTLD strings now could pay huge dividends in the future,
especially considering the time and cost of after-the-fact trademark
litigation, UDRP proceedings, and ad hoc
brand enforcement and protection.
Authors:
 |
| Hamad Hamad |
 |
| Jason Mueller |
 |
| Jason Nardiello |
