Are You Ready? The Launch Of New gTLDs


by IP Group

(402) 341-3070

We know your brands are valuable assets to your business. We want you to be aware of the upcoming expansion of the Internet domain name system, and actions you or your company can take—as brand owners—to help protect your brands in this new landscape.

So, what really is happening? As early as the end of the first quarter in 2013, some new gTLDs could go “live” on the Internet. First, we provide you with some background information.

Background

What is a gTLD?

The Internet domain space is divided into top-level domains (each a “TLD”). The TLD is the part of the name to the right of the dot. Each TLD is subdivided into second-level domains, and so on. For example, as to mcgrathnorth.com, the TLD is .com, and “mcgrathnorth” is the second-level domain.

There are different types of TLDs. A gTLD is a generic TLD. Currently, there are 22 gTLDs, including .com, .net and .org. (There also are country code TLDs (“ccTLD”), including .us, .ca and .mx. ccTLDs are not part of the new program we discuss in this email.)

In June 2011, the Board of Directors of the Internet Corporation for Assigned Names and Numbers (“ICANN”) decided to launch the New gTLD Program. ICANN is a non-profit organization that coordinates, among other things, the Domain Name Space (“DNS”), the Internet Protocol (“IP”) addresses, space allocation, protocol identifier assignment, and gTLD system management.

What has happened so far?

The new gTLD application window opened on January 12, 2012 and closed on May 30, 2012. This summer, ICANN published the list of new applied-for gTLDs, which can be found at this link: http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en. Applicants who are successful must act, or contract with another organization to act as a registry operator for their respective gTLD. None of these are live yet on the Internet.

The application phase—for this round—is over. We now are in the “evaluation phase.” This phase includes a public comment period, an objection period, and an independent evaluation.

What You Can Do to Help Protect Your Brand

What can you do to get ready?

  1. We encourage all brand owners first to review the list of applied-for gTLDs. Many of you will be interested in some of the more general applied-for TLDs, such as .company and .blog. http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en
  2. If you or your company is concerned about a particular gTLD, you may consider submitting a public comment on an application or applications in ICANN’s Application Comment Forum via this link: https://gtldcomment.icann.org/comments-feedback/applicationcomment/login;jsessionid=8F69CDC4B1C068661DE2B643DAC83AF1
    ICANN charges no fee for the submission of comments. Comments submitted on or before August 12, 2012 will be forwarded to the evaluation panel that independently evaluates the application for the respective gTLD—for its review and consideration. You still may submit comments after August 12, 2012; however, the evaluation panel may not review them.
    All comments are available for public viewing.
  3. If you believe the applied-for gTLD violates you or your company’s legal rights, you may have standing to file a formal “Legal Rights Objection” against the application with the World Intellectual Property Organization (“WIPO”). The deadline to file such an objection is January 13, 2013.
    If you would like more information on filing a formal objection, please contact us.
  4. You or your company should consider recording your qualified marks in the Trademark Clearinghouse. The Trademark Clearinghouse is a central repository for information pertaining to the rights of trademark owners. October 2012 is the target date for the Trademark Clearinghouse to begin accepting data from trademark owners.
    There will be only one Trademark Clearinghouse for all new gTLDs.
    For more information on the Trademark Clearinghouse, see below. We will send you another email announcing the date that the Trademark Clearinghouse will begin accepting data from trademark owners, once that date is set. In the meantime, do not hesitate to let us know if you have any questions.

 

More on the Trademark Clearinghouse

What marks could be included in the Clearinghouse?

For inclusion in the Trademark Clearinghouse, a mark should be: (1) a nationally or regionally registered word mark from any jurisdiction; (2) a word mark that has been validated through a court of law or other judicial proceeding; (3) a word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; or (4) a mark other than those set forth in (1) – (3) that constitute intellectual property, as determined by the registry operator and the Clearinghouse based on the services the respective registry operator chooses to provide.

For example, if your company owns a mark registered on the Principal Register of the United States Patent and Trademark Office, that mark could be included in the Trademark Clearinghouse under (1) above.

What are the Clearinghouse’s fees?

The Clearinghouse’s fee or price for recordation is expected to be less than $150 per submission. Annual renewal fees for Clearinghouse records are expected at a percentage of the initial price.

What are the benefits of recording marks in the Clearinghouse?

All new gTLD registries will be required to use the Trademark Clearinghouse to support certain activities. Those activities are the Sunrise service and the Trademark Claims service.

What is the Sunrise Service?

All new gTLD registries must offer Sunrise registration services for a minimum of 30 days before general registration begins. The Sunrise period provides an opportunity to eligible trademark owners (i.e., an owner whose mark is recorded in the Clearinghouse and meets other eligibility requirements) to register domain names in a particular gTLD, before names become available for general registration. In other words, the Sunrise period provides an opportunity for an eligible trademark owner to register a domain name in which its mark recorded in the Clearinghouse is the part of the domain name to the left of the dot.

Also, notice that another is seeking a Sunrise registration will be provided to owners of marks in the Clearinghouse that are an “Identical Match” to the name to be registered during Sunrise. (“Identical Match” means that the domain name consists of the complete and identical textual elements of the mark in the Clearinghouse. In this regard, spaces can be replaced by hyphens (and vice versa) or omitted; and only certain special characters can be spelled out with words describing the character, such as “@” or “&.” Also, punctuation or special characters in a mark that are unable to be used in a second-level domain name may be omitted, or replaced by spaces, hyphens or underscores and still be considered “Identical Matches.” No plurals and no “marks contained” qualify.)

What is the Trademark Claims Service?

All new gTLD registries must offer Trademark Claims services until the end of the first 60 days of general registration in all new gTLDs. The service will provide a real-time notice to a party attempting to register a domain name in which the part of the name to the left of the dot is an “Identical Match” to a Clearinghouse record. The notice should provide the prospective registrant access to the Trademark Clearinghouse database information referenced in the notice. The links to this information in the notice will be provided in real time without cost to the prospective registrant.

To proceed with registration, the prospective registrant must warrant that it (a) has received notification that the mark(s) is included in the Clearinghouse; (b) has received and understood the notice; and (c) to the best of its knowledge, the registration and use of the requested domain name will not infringe on the rights that are the subject of the notice.

The Trademark Claims service also will notify relevant trademark owners when a domain name is registered in which the portion to the left of the dot is an “Identical Match” to a Clearinghouse record.

 

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