By Ashe-lee Jegathesan, Melbourne IT’s general counsel and company secretary. Jegathesan also leads the new generic top-level domain (gTLD) application consulting team for Melbourne IT Digital Brand Services
There are currently more than 225 million global domain names registered on the web with millions being added each month. Traditionally there has been a handful of new domain extensions – such as .com or .org, called Top Level Domains (TLDs) – added each year, expanding the domain landscape and giving organisations a steadily growing environment in which to protect their trademarks.
However, an estimated 1,500 new TLDs will be introduced from 2013, meaning a rush of new names and online complexity… and brand protection considerations must start now.
The new program from ICANN, the governing body for domain names, will allow companies, communities and cities to apply for and run their very own domain. "The application process will soon close, and towards the end of June ICANN is expected to publicly post all TLD character ‘strings’ that have been applied for, as well as which organisations applied for each string, and how each organisation intends to use the name.
Brand owners should ensure they check who has applied for a TLD (and what they have applied for) so that they can assess the impact on their online brand strategy and whether an application infringes on their brand.
Some brand owners may also find that another organisation has applied for an industry term (e.g. .hotel or .finance) that relates to one or more of their brands. How the applicant plans to use the name, and the protections they intend to put in place to ensure the legal rights of brand owners are protected, will certainly be of interest.
There are a number of participation options available to brand owners during the application evaluation phase, but they must move quickly.
Options to Respond:
For 60 days from Reveal Day, anyone can submit comments on any application free of charge. For brand owners, doing so is absolutely critical. ICANN’s Evaluation Panel will take these comments into account when writing their evaluation, and it is the only way for a company or individual to have their voice heard by the panel without lodging a formal objection.
Brand owners may file a formal objection against an application. There is a seven month window to do this. There are specific grounds on which a formal objection can be filed. These include string confusion, legal rights infringement (generally trademark), limited public interest, or a community objection (not in the interests of the community at which it is aimed).
The criteria for a successful legal rights objection to be mounted are quite stringent. An identical trademark may not necessarily prevent an application being approved, without evidence of the trademark holder’s rights being infringed.
ICANN will not approve multiple applications for strings that are identical or so visually similar that they could result in user confusion. Applicants that are identified as being in ‘String Contention’ are encouraged to reach a settlement or agreement among themselves that resolves the contention. For example, the parties may agree to jointly use the string, or reach a settlement where a competing party withdraws.
Community-oriented applications will prevail over a competing application in string contention. For example, an industry body representing banks would be more likely to be successful in applying for .bank than a single bank.
If no agreement is able to be reached between competing parties, and none of the competing applications are withdrawn, an auction process will be undertaken by ICANN to select the TLD operator for that string.
The challenge for many organisations is in effectively participating in ICANN’s different processes to voice any concerns or support for a particular TLD string. The timeframe in which all companies need to review the publicly posted applications (hundreds of pages each), conduct a thorough assessment of the impact each relevant application will have on a brand, and lodge either a public comment or a formal objection is relatively short, and will require an intensive investment in resource and expertise on several fronts.
It’s highly likely that already stretched legal departments will be enlisted to help their marketing and executive colleagues decide the appropriate course to take, and will in turn need to seek the support of those with expertise in analysing the potential for online brand infringements to help them uncover and address any risks.
New TLDs in 2013
The results of the initial application evaluation period – where applicants find out if they have passed the ICANN criteria – are likely to be published in late 2012. This vast expanse of virtual real estate will begin to be released in 2013 but the journey there is far from over.
Whether an organisation is applying for a new TLD or not, the time to plan its strategy for undertaking that journey is now.