Reveal day for gTLDs: Who applied, and what happens next?

Yesterday the full list of gTLD applications was finally announced by ICANN, putting an end to the speculation about who has applied for what. There were 1,930 applications in total, for 1,409 unique gTLDs ranging from .AAA to .ZULU with 166 applications in the non-Roman alphabet. The full list can be found here: New gTLD Applications.

Google applied for the most at 101, with Amazon second applying for 76.  As expected, big brands have got involved to ensure their names are protected but many, such as Google and Amazon, have also opted to embrace the wider opportunities involved in becoming a new gTLD registry operator. Others have applied for generic gTLDs relevant to their sector. L'Oréal, for example, has applied for .LOREAL and .MAYBELLINE, but also for .MAKEUP, .SKIN and .HAIR.

The most contested new gTLD is .APP (attracting thirteen applications, with both Google and Amazon among them) followed by .HOME and .INC which each attracted eleven applications. It is likely we will now see negotiations going on between competing applicants. If agreement is not reached then those who otherwise meet ICANN's criteria will be entered into auctions to decide who wins each contested gTLD.

Perhaps unsurprisingly given the substantial cost of applying (US$185,000) there is little obvious evidence of cybersquatting at this level, although there will no doubt be disputes resulting from the applications and brands owners should be scrutinising the list carefully to see if there are any applications of concern.

So, what happens next and why should you be concerned?

Aside from the obvious problems posed by an application for .YOURBRAND, you may be concerned about how a particular application aimed at your industry will be used.  For example as a food retailer should you be concerned about the additional threat of cybersquatting posed by .PIZZA, .RESTAURANT or .KITCHEN? How will you monitor all of these new gTLDs for cybersquatters?

If you are faced with a third party applying for .YOURBRAND you might want to consider a "legal rights objection" based on your registered or unregistered rights.  This will succeed if the potential use of the gTLD by the applicant is found to take unfair advantage of the distinctive character or reputation of your mark, or otherwise create an impermissible likelihood of confusion.  The applicant's intention in applying and any rights that they may have in the gTLD will be considered.  It is therefore possible that an applicant who can show bona fide rights to use a name may be able to overcome a legal rights objection from another party with concurrent rights in the name.  Yesterday marked the beginning of a 7-month period for during which such formal objections may be made.

In addition, yesterday marked the beginning of the less formal 60-day comment period.  Comments are free and open to all, and will be looked at in determining whether the application passes initial evaluation.  Any application for a gTLD that causes concern should be looked at carefully to see whether a comment may be useful.  Applicants are required to provide details about how they intend to use the gTLD.  If such use is likely to cause confusion with your brand, or if it fails to meet any of the application criteria, this is your chance to make the point early and potentially to influence the evaluator's decision.  A comment, or the threat of an objection, might be enough to persuade an applicant to implement changes which will protect your position.  However, if you want to make a comment you will need to act fast – the period for doing so closes on 12 August 2012.

Once new gTLDs go live, the process of protecting your brand online will inevitably become more complicated.  The cost of defensively registering your brand, and all possible variations, in all new gTLDs would be overwhelming.  However, with a proper strategy in place, and by taking advantage of the safeguards ICANN has built into the system, brand protection online can be streamlined and made more manageable.  Some important points to be aware of are set out below:

• The Trade Mark Clearinghouse: Rightsholders who register their trade marks at the Trade Mark Clearinghouse will be notified when third parties try to register domain names comprising their mark during the start-up phase of new gTLDs. ICANN recently announced that Clearinghouse services would be provided by Deloitte and IBM.  Full details of the process are yet to be released. Applications are likely to begin to be accepted at the end of 2012 or the beginning of 2013, when new gTLDs begin to go live.
  
  
• Sunrise Periods: Compulsory sunrise periods will allow eligible rightsholders an early opportunity to register domain names comprising their mark in new gTLDs.
  
  
• Post-Launch Rights Protection Measures: A number of new measures have been bought in by ICANN to supplement the protection already offered by the Uniform Domain Name Dispute Resolution Policy (UDRP). These include the Uniform Rapid Suspension (URS) which, as  its name suggests, is designed to allow rapid suspension of domain names which infringe existing rights at a lower cost than the UDRP.  ICANN has also adopted a new policy – the Post-Delegation Dispute Resolution Policy (PDDRP) – which enables rightsholders to complain about a registry that encourages cybersquatting behaviour.
  
  

Currently there are around 300 different top level domain names.  Yesterday's announcement means that this could increase more than four-fold.  It remains to be seen what effect new gTLDs will have on the online landscape, but it is essential that brands owners, whether they are in or out, remain vigilant to ensure their brand does not lose out.