Drum roll please...........gTLDs applicant list is out!

Yesterday ICANN published the list of gTLD applications and confirmed that they have received 1,930 applications. The gTLDs applicant list is available here:

Brand owners should review the list as it will reveal whether anyone has applied for any domain names identical or similar to their brands. Companies proposing new gTLDs include Google, Apple, Sony, Amazon, Microsoft, L’Oreal, Samsung and Citigroup.

Publication of the list kicks off a 60 day period in which the public can comment on any of the applications.

In addition, interested parties now have a seven month window in which to object to any of the new applications through WIPO e.g. on the grounds of trade mark infringement. This seven month period may be extended due to the unanticipated large amount of applications received by ICANN.

 

The 1,930 applications will be reviewed by ICANN’s evaluation panel over the coming months and the results of these evaluations should be available by the end of this year.

ICANN updates Applicant Guidebook on new gTLDs

Since our last blog on this topic, ICANN has published a new version of the generic top-level domains (gTLDs) Applicant Guidebook. The Guidebook describes the requirements and procedures for submitting applications for new gTLDs, as well as the criteria and procedures for evaluation of application.

The Guidebook contains a summary of the changes and the reasons for those changes.

The application submission period for gTLDs closed on 30 May and no changes have been made to the application process. The changes that have been made are in anticipation of the opening of the objection filing period.

The full list of gTLD applications is due to be published next Wednesday, 13 June 2012.

gTLD list due to be published by ICANN

There have been a number of developments on this topic since our last blog post. Since January, companies and organisations have been applying to the Internet Corporation for Assigned Numbers and Names (ICANN), to have almost any word, in any language, registered as a domain name or gTLD.

April 30th is an important date for all brand owners as the full list of domain name applications is due to be published that day. The number of applicants is expected to be at least 1,000. It will be interesting to see who has made an application.

Where an application has been made for a similar or identical domain name, it will be possible for brand owners to object through WIPO.It will also be important over the next few months for companies to consider registering their brands with ICANN’s Trade Mark Clearing House (TCH), which is an initiative being implemented by ICANN as part of the gTLD application programme to protect current trade marks. ICANN estimates that this will be operational by October 2012. The TCH will act as a central storehouse of trade mark information. Once an applicant attempts to register a gTLD that matches a trade mark registered with the TCH, they will receive a warning stating that the creation of the domain name may be considered cybersquatting. This system will be invaluable to brand owners of trade marks who, if registered in the TCH, will receive advance notification when someone tries to register a domain name that is identical to their trade mark.

Brand owners eagerly await publication of the list of applications. Hopefully further technical problems can be avoided - ICANN recently had to take the gTLD online application system offline for a few days after a technical glitch allowed some applicants to see the file and user names of other applicants. However, ICANN remains optimistic that the publication will go ahead as planned.

ICANN's Move to Allow For New Domain Names

On 20 June, the Internet Corporation for Assigned Numbers and Names (ICANN), the organisation that oversees Internet domain names, voted overwhelmingly in favour of one of the biggest changes in the web’s history, allowing a major expansion in the range of web suffixes available for registration.

Under the new naming system, businesses, organisations and governments will not be confined to the existing list of 22 generic Top Level Domains (gTLDs) that include ‘.com’, ‘.net’ and ‘.org’ when they apply to register a domain name. The proposal is that domain names suffixes will now be available in almost any word in any language, that is, nearly any word up to 63 characters in length.

It is thought that the new system will be particularly attractive to companies as it will give them the opportunity to take greater control of their branding. A number of international companies have already expressed their intention to create their own branded web suffixes such as Canon, Deloitte and Hitachi.

The idea behind the change is that organisations around the globe will be able to market their brand, community or cause in new and innovative ways. Rod Beckstorm, president of ICANN, spoke of this latest development in terms of “unleashing the global human imagination” and expressed hope that “this allows the domain name system to better serve all of mankind.”

From a global trade mark perspective, the new gTLDs have the potential to be both a blessing and a curse to companies. New web suffixes will give companies the opportunity to reinforce their brand names in new ways, but at the same time may result in an increase in legal actions required to defend trademarks. ICANN’s latest proposal has not therefore been without opposition, with many large companies expressing concern that they may be forced to spend millions registering their brand names simply to protect their intellectual property.

Applications for the new web suffixes will be accepted from 12 January 2012. Obtaining one of the new web suffixes will not come cheap - a successful application will cost the applicant $185,000 before legal and consultancy fees. In addition, there will be an annual fee of $25,000, a fact which is likely to deter many small and medium size enterprises.

Many companies have expressed reservations that this new system will leave them vulnerable to domain squatting. Domain squatting involves opportunistic applicants buying one of the new suffixes that bears a company’s name and then seeking to resell it to the company for a profit - a major problem in the earlier days of the internet.  Another potential problem may arise where more than one company or organisation wishes to register the same suffix, which could potentially be a particular problem for city governments, by way of example, will Dublin, Ohio try to register the ‘.dublin’ suffix before Dublin, Ireland?

ICANN believes it has appropriate procedures in place to mitigate these issues, including maintaining a trade mark clearinghouse to track registered names and establishing a new system to allow rapid takedowns of domains found to be infringing trade marks. ICANN also believes that the significant fees charged for new gTLDs and the difficult application process will deter domain squatting.

It will be interesting to see how the market reacts when the floodgates open in January.