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The New GTLDs and What it Means for Your Organization

Written by
Andrea Calvaruso
Nancy Lutz
Yasmin Tavakoli

Posted: June 24, 2012 @ 7:30 am
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What do Allstate Fire and Casualty Insurance Company, Wal-Mart Stores, Inc., Lance Armstrong Foundation, Top Level Domain Holdings Limited, and The City of New York have in common? Each are seeking to register generic top-level domains (gTLDs) (.allstate, .walmart, .livestrong, .beer, and .nyc respectively). Now the race is on to see which applicants will actually make it to the finish line and secure the right to operate new gTLDs! These “zoning” changes to the Internet will change the way we search, advertise, and shop online.

The Internet Corporation for Assigned Names and Numbers (ICANN) released the publicly available information from the 1930 new gTLD applications, which may be viewed at ICANN’s gTLD web site by clicking here.  As a Brand Owner, what do you do now?

Whether your company or organization applied for a gTLD or not, carefully review the list of published gTLDS with three main priorities in mind:

1. Are any of the gTLD strings similar or confusingly similar to your company’s key marks?

Focus on whether a gTLD is likely to be confused with your organization’s registered or common law marks or takes unfair advantage of their distinctive character or reputation. If so, consider submitting comments to ICANN during the 60-day Public Comment Period and filing a Legal Rights Objection during the 7-month Formal Objection Period. Your attorneys can assist you in determining which Rights Protection Mechanisms (RPMs) are best-suited to your issue and work with you to develop a brand protection strategy, including reviewing your company’s trademark portfolio, preparing Public Comments and pursuing a Legal Rights Objection through one of ICANN’s approved dispute resolution providers.

2. Are any of the generic or geographic TLD strings relevant to your company’s industry groups or channels of trade?

From a brand protection/enforcement perspective you should determine whether generic terms such as .bank, .beauty, .cars, .health, or .sport are relevant to your organization’s industry group, and carefully review the applications with an attorney to determine if any action is necessary or viable.

From a marketing perspective you should determine whether a gTLD for a generic or geographic term, such as .law, .basketball, .boston, .nyc, or .london, is of interest to the type of online audience important to your company’s brands. If so, track the progress of these gTLDs to see whether they are actually delegated and become operable registries.

If your organization identifies generic or geographic terms relevant to your industry or consumer base, such as .bank, .kids, .music, or .nyc, consider registering second level domain names reflecting your brands (e.g., suntrust.bank, hasbro.kids, ladygaga.music or wendys.nyc), particularly during the sunrise period available to brand owners. Do not overlook the potential for utilizing generic or industry-focused gTLDS to synergize your organization’s branding and marketing strategies once the new gTLD strings go live. A well-known industry term such as .bank for the financial sector or .sport for athletic associations, sports franchises, and sportswear companies may become the “go to” place for consumers interested in these topics. If so, these gTLDs may be important vehicles by which to promote your company and its brands.

3. Which of your company’s brands should be registered with the Trademark Clearinghouse?

Review your organization’s trademarks, and determine which ones it plans to register with ICANN’s Trademark Clearinghouse. Registering with the Clearinghouse gives your organization the opportunity to put others on notice of its prior trademark rights (brand protection) and priority to file a second level domain name registration reflecting the trademark during the sunrise period for each gTLD of interest (brand marketing). Your attorneys can assist you in reviewing your trademark portfolio, filing Trademark Clearinghouse submissions and developing a strategy to prioritize and monitor gTLDs as they wind their way through ICANN’s approval and delegation process.

Who is in the Running?

Of the 1930 applications, the field consists of:

  • roughly 500 brand-specific gTLDS, including acronyms, such as .dupont, .gallo, .gmail. .godaddy, .hbo, .hitachi, lancome, staples, and weather channel
  • scores of what may be generic terms such as .computer, .faith, .home, .music, .property, and .tech
  • 84 community-based applications, filed by applicants who intend to operate their registries for the benefit of a delineated interest group or established community, such as .art, .bbb (Council of Better Business Bureaus, Inc.), .catholic, .cpa, and .gay
  • 66 geographic terms such as .africa, .barcelona, .moscow and .sydney
  • 116 non-Latin scripts such as one in Arabic, which translates to “Catholic” by the Pontificium Consilium de Comunicationsibus Socialibus (PCCS), another in Chinese which translates to “Volkswagen” by Volkswagen (China) Investment Co., Ltd., and KOM in Cyrillic by VeriSign Sarl, which is a transliteration of “com”
  • applications from 60 countries: 911 from North America; 675 from Europe; 303 from Asia- Pacific; 24 from Latin America and the Caribbean; and 7 from Africa
  • 230 gTLD strings are identical to at least one other string filed by another applicant. Identical strings are not allowed so one party must prevail either by settlement, Objection and Dispute Resolution, or auction to the highest bidder.

Given that this is an untested marketing vehicle in a fickle world economy, and the costs to apply for and operate a gTLD are very substantial, it is not surprising that branded gTLDs make up only about a quarter of the total. On the other hand, owners of generic gTLDs may be betting that these gTLDs will create healthy revenue streams if thousands of companies and consumers gravitate to them to register second-level domains (holidayinn.hotel), place ads, and shop. For instance, .hotel may become a key resource when consumers plan trips.

What Dates Should I Track?

ICANN estimates the following key dates of interest:

  • June 13 – Public Portions of gTLD Applications are Published
  • June 13 – August 12 – Public Comment Period on Public Portions of gTLD Applications (60-day window)
  • June 13 – January 13, 2013 – Formal Objection Period (7-month window)
  • June 24 – 29 – ICANN’s 44th Public Meeting in Prague, Czech Republic
  • October 2012 – Trademark Clearinghouse Submissions
  • March 2013 – Delegated gTLDs go live, Sunrise Periods begin as do the periods for post- delegation Rights Protection Mechanisms such as Uniform Rapid Suspension (URS), Post- Delegation Dispute Resolution (PDDRP), and Registry Restrictions Dispute Resolution (RRDRP).

About the Authors

Andrea Calvaruso is a partner at Kelley Drye in the firm's New York office and chair of the Trademark and Copyright practice group. Her work has been recognized in the 2011 and 2012 U.S. editions of The Legal 500, a highly respected independent attorney rating publication, reporting that her clients praise her as "smart, reliable, trustworthy, knowledgeable and responsive." Ms. Calvaruso also litigates trademark, trade dress, unfair competition and copyright cases.

Nancy Lutz is a partner at Kelley Drye in the firm's Washington, D.C. office. She protects clients' trademarks, copyrights, and domain names, including the new gTLDs, on a worldwide basis by developing legal strategies to meet their business needs. Ms. Lutz manages large, worldwide portfolios of well-known sporting goods, apparel and other trademarks. She also conducts due diligence reviews of domestic and foreign intellectual property relating to corporate acquisitions and divestitures and secured transactions. Ms. Lutz was selected as one of The Best Lawyers in America in the Copyright and Trademark Law areas, 2010-2012.

Yasmin Tavakoli is an associate at Kelley Drye in the Washington, D.C. office. Her practice focuses on international trademark portfolio management, IP licensing, opposition and cancellation proceedings, and all forms of IP litigation.

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