IP: 3 tips for navigating ICANN’s new gTLD roadmap

The implications of the new domains go beyond trademark infringement concerns

In our last column, we warned of traffic jams and detours ahead for the Internet Corporation for Assigned Names and Numbers’ (ICANN) New Top-Level Domain Program following, its big reveal of the more than 1,900 generic top-level domain (gTLD) applications it has received. And so it goes. Once again, in what looks dangerously like a developing pattern, ICANN recently published a roadmap for its controversial program.

Where we are now, and where are we going?

According to its new plan, ICANN is undertaking initial evaluation of all 1,924 gTLD applications at once and expects to publish the results in June or July of 2013. Between now and then, however, the new roadmap includes some important points of interest.

  • Metering into delegation. ICANN confirmed it will limit the launch of approved gTLDs (otherwise known as “delegation”) to no more than 1,000 per year. Perhaps reluctant to approve any new procedures without community consensus, ICANN has asked for comments on “metering” procedures to be implemented pre-delegation. The first comment period on metering closes Oct. 1. If no consensus emerges, ICANN may solicit additional comments, beginning with a public session at its October meeting in Toronto, and extend the comment period to Nov. 11. ICANN hopes to implement an agreed-upon metering process no later than mid-January of 2013, and the first delegation request is currently scheduled for August 2013.
  • Clarifying questions pilot program. Early estimates suggest that 90 percent or more of applications will require Clarifying Questions (CQ) from the evaluation panel. To ensure that these questions are as clear as possible and applicants have adequate time to respond, ICANN launched its CQ Pilot Program, selecting approximately 50 applicants to participate. Solicited participants receive no preferential timing advantage and may opt out of the pilot program, which began Aug. 27 and which ICANN expects to have completed in the second week of September.

Implications for your organization

Companies with gTLD applications, whether one or dozens, may appear to have the most invested in this process, but brand owners—those with competitors that have applied for gTLDs and consumer advocacy groups, among others—must remain engaged and alert on this winding road. Well-documented concerns, such as the potential for trademark infringement, for example, remain valid and important, but implications of the delegation of many of the proposed new gTLDs are much broader in scope.

Consider the five applications for .music. Three of the applications are standard. Two are community based, affording the applicants the option to elect a community-priority evaluation as part of the string contention procedure. Assuming all community priority criteria are met, this procedure eliminates all directly contending standard applications, regardless of how well-qualified. Of the standard applications, at least one proposes reserving some number of the subdomains for the applicant’s sole use, with the applicant having discretion over which particular subdomains it wants to use. Although .music is a generic term and unlikely to be the subject of a formal objection on trademark grounds, the ultimate delegation of this gTLD has wide-ranging implications for a number of groups, including the recording industry, composers and recording artists, online music retailers, nonprofit organizations and informal groups in the field of music. In order to be in a position to evaluate the potential impact of the upcoming gTLD delegation on their businesses, applicants and non-applicants alike should become informed as to the range of generic terms applied for within their sectors or industries, the type of applications (standard versus community) filed and the terms of those applications (closed versus open, objections procedures, stated planned uses of the registry, etc.).

How do we get there from here

For now at least, ICANN has designated a roadmap for its process. Companies should develop and implement their own roadmaps for influencing the outcome of any applications that could impact their businesses.

  1. Determine your points of interest. In addition to applications that could directly impact their brands and marks, companies should track applications for generic or descriptive terms relevant to their current or planned business operations, as well as geographic terms that are relevant to describing their goods or services. The advice of counsel or other industry experts who have reviewed and analyzed the applications and are familiar with the processes that ICANN has proposed or implemented may prove valuable here.
  2. Plot your route so you don’t miss any turns. Companies should take advantage of current opportunities to influence whether a gTLD application ultimately will be approved. The public comment period (set to end on Sept. 26) and the formal objections process (set to run for approximately seven months from June 13) are two options for influencing the outcome of the program. Companies should determine whether they have grounds to assert any of the four formal objections (String Confusion Objection, Legal Rights Objection, Limited Public Interest Objection, Community Objection) and, if so, whether they want to undertake the task. They should also decide whether they want to go on record as making public comment.
  3. Consider a carpool. ICANN has seemed susceptible (or at least responsive) to more informal means of influence from various sets of stakeholders. For example, the Association of National Advertisers, the Federal Trade Commission and several existing and new registries have been vocal throughout the gTLD application process, and ICANN has engaged in a public dialogue regarding the concerns raised. Companies and their representatives should engage in conversations in trade associations, professional organizations or other interest groups about any concerns with the gTLD process in general or with specific applications (particularly community-based applications relevant to their industry). Groups may discover areas of overlapping concern that they might more effectively present to ICANN collectively, rather than through individual comments or objections to specific applications. Companies should also take advantage of ICANN’s solicitation of input and open sessions at upcoming meetings.

Contributing Author

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Daniel Frohling

Daniel D. Frohling is a partner in the Chicago office of Loeb & Loeb LLP, where he leads the firm’s gTLD Development and...

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Contributing Author

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Melanie Howard

Melanie Howard, senior counsel with Loeb & Loeb LLP in the firm’s Los Angeles office, focuses her practice on intellectual property law, including litigation, counseling...

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