Application Status and New Timeline For ICANN’s Top Level Domain Roll-Out

March 13, 2012

Since January 12, 2012, ICANN, the Internet Corporation for Assigned Names and Numbers has been accepting applications to establish new top level domain name registries (the word to the right of the dot). As of the 10th of March, 254 applicants have registered their intent to apply for new generic top level domains (“NgTLDs”) with ICANN through the TLD Application System (TAS). No count of the number of completed applications will be available until after the process closes on April 12, 2012, and up to 50 new gTLD's may be applied for by each registered applicant. So, the actual number of new gTLDs for which application will be made is still unknown.

Based on these numbers, and the fact that few companies have announced plans to register .BRAND gTLDs, it appears that most companies have decided not to participate in this first round of applications. Many have expressly stated that the cost and complexity of the application process, the need to form long-term service provider relationships, and the uncertain benefits from registration have led them to delay registration.

However, all trademark owners doing business or engaging in marketing or communications over the internet should be aware of some important dates in the process:

  • March 29, 2012 –The final day on which applicants can register using the TAS to apply for a new gTLD.
  • April 12, 2012 – The final day on which completed applications can be filed with ICANN. After this date, ICANN will begin the application review process.
  • May 1, 2012 – REVEAL DAY –ICANN will publish a list of all the TLD strings for which applications have been filed. This date will also trigger two processes:
  1. Application Comment Process – Between May 1 and June 30, any interested party may submit comments regarding any of the proposed gTLD's for consideration by the application evaluation panels.
  2. Objection Period – Beginning May 1, and for approximately 7 months, formal objections to any of the new gTLD applications based on string confusion, legal objections, community concerns, or limited public interest bases may be filed.
  • June 12, 2012 – Initial evaluation of gTLD applications will commence, focusing on possible string confusion, similarity with reserved strings, geographic name ineligibility, or potential instability the gTLD or applicant’s use could cause to the domain name system, as well as applicants’ demonstration of acceptable technical, operational and financial capabilities to run a registry.
  • October 2012 – ICANN expects to announce the organization(s) operating the Trademark Clearinghouse and publish their procedures, rules and regulations.
  • November 12, 2012 – Initial evaluation period ends and results posted.
  • November 29, 2012 – Last day for applicants or evaluators to request extended evaluation to consider additional information regarding application, string, and applicant.
  • January 2013 – ICANN expects (1) the first NgTLDs to begin operation, and (2) trademark owners to begin recording trademarks with the Trademark Clearinghouse.

During the application process, all trademark owners, whether or not seeking a gTLD, should re-evaluate and update their policies and plans for utilizing and protecting their trademarks, trade names, service marks, proprietary information and content on the internet. The ICANN program for new gTLD's sets in motion a number of opportunities and challenges for all brand owners, and companies should prepare now by developing policies and mechanisms for monitoring and enforcement action in readiness for May 1, when the comment and objection period begins. The potential cost of not preparing for the "New Internet" could be far greater than the cost of an application – because brand equity may be at stake.

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.

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