Wednesday, June 13, 2012

ICANN revealed the new gTLD applications today; were any infringements to your Brand revealed?

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.


Hamad Hamad

Jason Mueller

Jason Nardiello