August 12, 2012 Deadline Near for Public Comment on New Generic Top Level Domains

July 30, 2012

The list of 1,930 proposed top level domains under the Internet Corporation for Assigned Names and Numbers (ICANN) new generic top level domain (gTLD) program includes a large number of generic terms that applicants seek to own and control, such as .hotel, .book and .baby. Time is running out for companies that are in businesses described by such words to consider the impact of someone else’s ownership of these domains. While trademark owners still have approximately six months to make a formal objection to applications for domains that are confusingly similar to their marks, the period for public comment regarding the new generic top level domains ends August 12, 2012 under the current ICANN schedule.

Generic terms: New gTLDs which consist of generic terms are subject to refusal if likely to create issues of trust, compliance, consumer use or system stability. These points may be raised through submission of informal public comments for consideration by the ICANN evaluators and independent objector when they begin their review of gTLD applications. These comments are important because the independent objector can only raise issues against registration of new gTLDs which are clear from the application or are brought to his attention through these comments.

Trademark Rights: Domains that include or are confusingly similar to a company’s trademark may be challenged through a separate process. The owner of either a registered or unregistered mark may make a formal objection based on the confusing similarity of the TLD with its existing legal rights. The deadline for these formal objections has not been definitively set but is expected to be sometime around the end of 2012.

While owners of trademark rights threatened by a similar new gTLD will want to consider whether to formally object to the application, every entity may want to consider the potential that a word that is the common name of a fundamental aspect of its business may soon be a gTLD. Over 600 public comments have been filed to date, and most relate to the registration of .porn and .sex gTLDs. However, other comments note dangers and benefits possible with the registration of other generic words as top level domains. All such comments will be reviewed by ICANN’s evaluators and by the independent objector ICANN recently named to perform this function. Although informal, the comments can have tremendous impact on the approval process, because the appointed independent objector can only raise issues which are clear from the application or are brought to the independent objector’s attention through these comments. Comments are publicly available and should be targeted, focused and well-prepared.

Key issues for consideration focus on both the capability of the applicant to manage a system of registering second level names in the gTLD it is seeking, what kind of policies and procedures it will use for managing rights, disputes and abuse, and whether the new gTLD will have a negative impact on a company’s digital business.

Additional basic information about ICANN’s new gTLD program is available at ICANN’s Application FAQ.

Marshall, Gerstein & Borun is highly knowledgeable about the new gTLD program and all aspects of Internet commerce. For more information, advice and counseling tailored to specific needs, please contact Gregory J. Chinlund by email at [email protected] or by phone at 312.474.6650.

This alert is intended to be informative and should not be interpreted as legal counsel for any specific fact situation. The information contained herein is for informational purposes only and is not legal advice or a substitute for legal counsel. Readers should not act upon the information presented without consulting professional legal counsel. Pursuant to applicable rules of professional conduct, this communication may constitute Attorney Advertising. © 2012 MARSHALL, GERSTEIN & BORUN LLP, Chicago, Illinois. All rights reserved.