Reveal Day: Domain Names

June 13, 2012

The Internet Corporation for Assigned Names and Numbers (ICANN) having allowed for a radical increase in the number of Top Level Domains (‘TLDs’), such as .com and .info, has now published the full list of applicants and strings that have been applied for: find the list here. It makes for an interesting read.

The key dates are the following:

13 June 2012 – Application comment and formal objection period begins
12 July 2012 – Initial evaluation begins
12 August 2012 – Application comment period ends

Any organisation that is concerned about any of the gTLDs that have been applied for will now need to prepare to launch official objections with ICANN and many lawyers are advising that steps should be taken to protect brands from unwanted registrations once the gTLDs go live. ICANN have promised a ‘Trademark Clearinghouse’, ensuring ongoing protection of trademark rights. The Trademark Clearinghouse will accept and authenticate rights information, and will support both trademark claims and sunrise services, required in all new gTLDs.

Mark Owen, intellectual property specialist at Harbottle & Lewis, predicted legal problems for brand owners:

‘While potentially very profitable for some people and opening up a range of possibilities for new services, the whole exercise has been viewed with trepidation by many brand-owners. Already faced with the costs of having to defend their brand against unauthorised uses online and in .coms, they will now have hundreds of new uses to object to.’

Damian Herrington, lawyer in DLA Piper’s Intellectual Property and Technology practice, said:

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 for straightforward applications and potentially much longer for contentious applications. All brand owners (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. Brand owners should look to check out the list ICANN has published today and consider whether they plan to file an objection and on which grounds (String Confusion Objection, Legal Rights Objection, Limited Public Interest Objection and Community Objection). They should also consider objecting to second-level domains within some of the new gTLDs going forward (the first of which are likely to be registered in March next year).

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, future court litigation involving applicants, other rightsholders and/ or ICANN seems inevitable. In the meantime, applicants and other rightsholders need to carefully consider the various processes taking place in the coming months as the new gTLD programme is rolled out and act promptly in order to protect their rights.’  

Campbell Newell, Partner at Marks & Clerk LLP, comments:

‘The sheer number of applications – especially given this is only the first round – goes to show that the demand for branded or otherwise customised domain names is very much there. It has not been, as some speculated last year, a damp squib. As commerce continues to migrate online, and the internet embeds itself into more and more aspects of everyday life, brand and reputation are becoming more important than ever before. So it makes sense for companies and organisations to seize the opportunity to distinguish themselves like this. Nonetheless, not all applications on this list will represent a proactive desire to incorporate a branded domain name into marketing strategies. Some applications will have had a defensive motivation, i.e. businesses and organisations wishing to ensure that a certain domain name cannot be used – or abused – by others. Looking at the list, it can be seen that there are several domain names (such as ‘app’ and ‘book’) with multiple reputable applicants, none of which have a particularly unique claim to the phrase in question. It will be interesting to see how these disputes play out, both during and after the registration phase.’