new gTLD time

String confusion?

Very shortly ICANN will be making its much-anticipated announcement of just who has applied for one of the new top-level generic domain names. Will we see .nike? .coke? .kodak? .fox? Presently it looks like 30th April will be the day of the announcement.

Apart from curiosity, why would you want to keep an eye out for this list? Well, if you are a trade mark owner, you might want to make sure that someone is not planning to use your well-known trade mark as a gTLD. ICANN will have an opposition period - all objections must be filed within seven months from the publication of the applications.

There are a couple of main possible grounds of objection for trade mark owners:

Legal Rights Objections: A trademark owner may object to any gTLD application, even if it has not applied for its own gTLD; and regardless of whether the rights claimed are based on registrations or common law use. Legal Rights Objections will be decided by WIPO using the same criteria as are used to decide domain name disputes. If the trademark owner prevails, the gTLD will not become operational.


String Confusion: A gTLD applicant may object to another proposed gTLD if it believes that the string of letters making up the other gTLD is confusingly similar to its own string of letters. If “string confusion” is found, only one of the gTLDs will be allowed. That will be determined by an auction. Thus, applicants must carefully consider whether to assert such a claim.

It seems certain that the list will cause a certain amount of interest, so keep an eye out for its release soon.

“String confusion”! I wonder if that is anything like “string theory”...chaos?

dot brand - fasten your seatbelts

A wild ride.

The thorny question of just how far a commercial enterprise needs to go in registering domain names has become just that bit more thorny, with the imminent launch of the dot brand gTLD (generic Top Level Domain). Unlike a second-level domain, this will turn a brand owner into something akin to a domain registrar. Think .freemanip instead of freemanip.com

INTA, which represents trademark owners, has a full explanation here, and on the subject of whether you should apply, says:

The ICANN application fee alone for a new gTLD is US $185,000; completing the application will also require specialized technical, business and legal knowledge. If more than one applicant has a legitimate interest in a certain new gTLD string, the string may be auctioned to the highest bidder. Successful applicants will become part of the domain name system, will be required to execute a 10-year registry agreement with ICANN, and must meet various ongoing ICANN compliance requirements.

There has been a lot of hand-wringing over ICANN’s plans, but a recent survey by the registry services provider Afilias found that 44 percent of large companies in the USA and UK plan to apply to register dot brand domain names, although there was still some lack of awareness, especially of the up-coming deadline. ICANN is now accepting applications for new dot brand TLDs, but applications in the present window close on April 12, 2012, with no indication of when the next opportunity to apply will come - it may be several years away.

The application for a dot brand domain name apparently contain about fifty in-depth questions, many of a technical nature, so companies wanting to apply should be well into the process by now.

This commentator at the distilled blog was rather surprised that ICANN actually managed to move on this, and predicts confusion and that

Brands will rush to buy nonsense like .cocacola and then realize that they can’t use it as http://cocacola – so instead http://www.cocacola will just get redirected to their main .com site.

If the dot brand TLD is as popular as this survey indicates, there is likely to be quite a scramble for names, which puts more pressure on dispute resolution procedures. ICANN met this past week in Costa Rica, and so far has not given much detail on progress with the proposed trademark clearinghouse, an initiative designed to reduce conflicts with trademark owners. Here’s a report on ICANN’s lack of detail from a World Trademark Review blog.

A wild ride ahead.