Legal Brief - December 2011

ICANN's New gTLD Program: Dates Are Set for More Clarity

by Chase Marshall :: Sedo.com Legal Staff

ICANN’s new Generic Top Level Domain (gTLD) Program moves ahead as planned. With the application period scheduled to open in less than three months, important updates have been released for applicants. After a recent meeting in Dakar, Senegal, ICANN has agreed to establish a Trademark Clearinghouse, set important deadlines, and provided additional planning resources for gTLD applicants.

One of the most important developments to come out of ICANN’s new gTLD Program is the creation of the Trademark Clearinghouse. ICANN will select a private entity to run the Trademark Clearinghouse, which will serve as a worldwide database of trademarks. The entity responsible for operating the clearinghouse will serve to protect trademark holders from, and notify them of, potentially infringing second-level domain (SLD) registrations. Each entity whose gTLD application is approved will serve as the registry for that gTLD. Moreover, because there possibly could be hundreds of new gTLDs approved in the near future, a central body to track and protect the interests of stakeholders is critical.

In addition to the development of the Trademark Clearinghouse, ICANN has devised an initial solution to deal with the potentially unmanageable influx of gTLD applications. Currently, ICANN’s evaluation panels are slated to handle an estimated 500 applications during one evaluation period. However, due to the uniqueness of this new program, ICANN may receive over 1,000 applications during the application window. In the case where they receive more than 500 applications, ICANN will attempt to place the applications in processing batches. The evaluation panels will evaluate each batch successively, meaning the overall evaluation period would be prolonged. Although details have not been finalized, applicants will need to be more vigilant in keeping track of which gTLDs are approved so each can best protect their intellectual property rights.

ICANN also set some important deadlines at the Dakar meeting, along with a timeline for the objection period. Outside parties may file objections to gTLD applications between May 1, 2012, and December 1, 2012. The objection period extends two weeks beyond the initial evaluation period, which allows individuals to file objections not only during the evaluation period, but also after initial decisions have been made. The second set of dates extends the evaluation period for applicants who have failed the initial application evaluation. It is scheduled to run from December 1, 2012 to April 30, 2013. New gTLDs that have not been approved after the initial evaluation may be reconsidered during this five-month extension.

Given the complexity of this new program and the uncertainties regarding how the program will unfold in reality, ICANN plans to make progress in stages. In theory, new gTLDs may not be approved all at once and may be released in successive batches. The timing of this program places a heavier burden on trademark holders to monitor new gTLDs and protect their marks. On the other hand, the program will give rise to the potential for an enormous number of new registries, in turn creating market opportunity for potential domain name owners to consider when registering, buying, and selling new domain names in the future.

For more information regarding ICANN’s new gTLD Program, please visit newgtlds.icann.org.