update - ICANN reveals list of proposed new gTLDs
Further to our recent bulletin regarding new generic top level domains (gTLDs), the application period finally closed on May 30 and the list of proposed new gTLDs for which the Internet Corporation for Assigned Names and Numbers (ICANN) received applications was revealed on June 13.
ICANN received 1930 applications for new gTLDs, including 116 in non-ASCII characters including, for example, strings using Arabic, Chinese and Cyrillic scripts.
Among the types of gTLDs applications filed were many brand names (e.g., .AIG, .BANANAREPUPLIC, .BLOOMINGDALES, .FIAT, .HEINZ, .MICROSOFT) and generic terms (e.g., .HAIR, .MAKEUP, PHOTOGRAPHY, .PIZZA), as well as 66 geographic names (e.g., .QUEBEC, .BARCELONA, .DUBAI, .NYC) and 84 community-based domains (i.e., gTLDs which are endorsed by a clearly identified, pre-established existing community having a clear link to the gTLD) (e.g., .GAY, PHARMACY, CATHOLIC, .HALAL).
In many cases competing applicants applied to operate identical gTLDs (e.g., .APP. .ART, .BABY, .BLOG. .LAW, .MUSIC and .OSAKA, to name only a few. In all, 230 proposed new gTLDs have more than one applicant, comprising 751 applications for contested strings.
The period for filing objections to the proposed new gTLDs commenced June 13, 2012, and, although ICANN has not yet committed to a final deadline date, it is expected that the objection period will be open for approximately seven months. ICANN has set up an Objection and Dispute Resolution page to provide more information to those wishing to file objections and applicants wishing to respond to objections. Objectors are required to file their objection in approved form with the applicable dispute resolution provider together with the required fee. ICANN expects that all objections will be resolved within five months of the close of the objection period. There are four grounds of objection:
(1) Legal Rights – the proposed gTLD violates the trademark rights of the objector (please refer to our previous bulletin Trade-mark Owners be Vigilant – ICANN to Publish List of Proposed New gTLDs for more details);
(2) String Confusion – the proposed gTLD is confusingly similar to an existing top level domain operated by the objector or another applied-for new gTLD proposed for operation by the objector;
(3) Community – with respect to proposed new community-based gTLDs, a significant portion of the community opposes the proposed gTLD, as represented by the objector, which must be an established institution clearly associated with a defined community;
(4) Limited Public Interest –the proposed gTLD is contrary to generally accepted norms of morality and public order recognized under international principles of law.
In addition to the formal objection process, ICANN has provided for a forum by which the public can submit comments on a proposed gTLD application. Comments that are submitted by August 12, 2012 can be directed to the evaluation panel tasked with assessing the application and applicant and will be considered during the evaluation process. Alternatively, comments can be submitted by the public on the basis of the four grounds of objection, however, any such comments will not constitute a formal objection and will not alone prevent an application from being approved; these objection-based comments will not be passed on to the evaluation panels, but will be available to be viewed by the public and the applicable dispute resolution provider tasked with resolving any formal objections.
ICANN presently anticipates that the initial evaluation process will be concluded by December 2012/January 2013, with an expectation that the first approved new gTLDs will go live in 2013.
by Peter Giddens
For more information regarding the approval process for the proposed new gTLDs, including the process for submitting comments or filing formal objections, or any other issues relating to domain names or trade-marks, please contact:
a cautionary note
The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.
© McMillan LLP 2012