When ICANN revealed the list of gTLD applications in London last month, many brands immediately searched through the list of gTLDs hoping not to find any cybersquatting of their trademarks at the top level. The protections put in place by the ICANN community and the high cost of entry has meant that there have not been any obvious attempts to infringe any rights during the application process.
After the initial public buzz around the application list it has all gone quiet, but in the background ICANN are trying to resolve the batching and evaluation process after its embarrassing retreat from the Digital Archery process. The TradeMark ClearingHouse (TMCH) are trying to resolve concerns applicants and registries have with its implementation into the new gTLD model and discussions are on-going over the concerns many have regarding the increased risk of defensive registrations at the second level of new gTLDs.
The delay in finding a suitable solution to the batching and evaluation process has meant that there is no clear launch timeline available. This makes it a bit easier to put all the potential issues that brands will face in the new gTLD landscape to the side for now.
The reality is however that there is limited time left for brands to take a strategic position in regards to filing objections to applications. The objection period begun on Wednesday 13 June 2012 when ICANN revealed the applied-for strings, and it is intended to remain open for approximately seven months. The applicant guidebook offers four different objection types:
- String Confusion Objection (when a string is confusingly similar to an existing TLD or to another applied-for gTLD string). This objection is administered by the International Centre for Dispute Resolution (ICDR)
- Legal Rights Objection (when a string violates the legal rights of the objector (LRO)). This objection is administered by the Arbitration and Mediation Centre of WIPO
- Limited Public Interest Objection (the applied-for gTLD string goes against generally accepted legal norms of morality and public order that are recognized under principles of international law). This objection is administered by the ICC Centre
- Community Objection (when there is substantial opposition to the gTLD application from a significant portion of the community that the gTLD string is targeting). This objection is also administered by the ICC Centre
Preparing an objection and anticipating the need for a response requires interested parties to focus on new challenges, such as:
- Choosing one or more extensions that should be disputed or defended
- Determining the timing for initiating an objection or negotiation
- Choosing grounds for objection and preparing arguments
- Gathering support for an application
- Budgeting the objection plan
There may be no obvious issues with the list of applied for strings but on closer inspection of the applications we believe the list warrants another more in depth review. There are many applications for generic words across industry verticals that are designed to only allow registration under that term by the applicant themselves, thus prohibiting registration to competitors and other interested parties.
Brands should be contemplating the impact that such TLDs will have on their business in the future and what position they want to take in regards to the application now. Monitoring applications and sector specific strings is a relatively simple way to remain informed on the progress of an application.
Undertaking an in-depth review of applications that are of interest will allow organizations to identify the strengths and weaknesses of the proposed business model, operational plans, technical infrastructure, policies and procedures and where possible financial plans and provisions.
Such an analysis will provide valuable intelligence should you wish to formally object, negotiate with an applicant or support an application.
With a recent research paper suggesting that overall awareness of the new gTLD initiative within businesses is less than 50%, it is quite clear that domain managers need to start preparing their business internally for the challenges that they may face in 2013 and beyond. It is important that you choose a reputed and skilled domain industry consultant to help you navigate the gTLD process and prepare for this unprecedented liberalization of the Internet space.
As with any change, and especially one of this magnitude, preparation is everything!
Written by Ben Anderson, Head of New gTLDs Services, NetNames
24 July 2012