By Trevor Little
June 14 2012
Following the release of the gTLD application list, the applied for strings have been the subject of much discussion. For brand owners, whether applicants or not, the next step will be strategic analysis of the list as they plan their next move. As with all such efforts, preparation will be everything.
As WTR reported earlier, of the 1,930 applications, 230 strings had more than one applicant. In total there were 751 applications for contended strings, with ‘.app’ (13 applicants) topping the list, followed by ‘.home’ (11), ‘.inc’ (11) and ‘.art’ (10). For applicants involved in contested strings, Kurt Pritz, senior vice president, stakeholder relations at ICANN, explained that in instances where a community is one of the parties, their application will take priority. However, where there are numerous applicants he encouraged the respective “parties to work together to come to an accommodation” prior to the string being put to auction.
Quite how such an accommodation will work in practice will be part of the negotiation process – asked how feasible it would be for brands to effectively share a ‘.brand’ TLD in instances where companies share a registered trademark name (for instance the ‘.guardian’ applications from Guardian News and Media and The Guardian Life Insurance Company of America), Pritz noted: “It wouldn’t be for ICANN to guess how companies make an arrangement to share a gTLD – that is why there is no guidance on this in the applicant guidebook.”
Interestingly, Alexa Raad, CEO of Architelos, predicts that “with 751 applications involving 230 duplicated names, we are likely to see some horse trading between applicants with similar portfolios of names”, lending weight to the theory that some applications will have been made to ensure the applicant is directly involved in the discussion over a particular gTLD.
Away from discussion between parties involved in contended strings, applicants and non-applicants alike will be scrutinising the list to assess the need to be involved in the next phase of the ICANN process. Of course, ICANN will be engaging in its own evaluation, and yesterday the organisation was at pains to stress that the published list are applications, not approved names. In addition to the 60-day comment and seven-month objection periods that were triggered by yesterdays announcement (which ICANN stressed would not be extended), Pritz explained: “Beginning on July 12, independent evaluation panels will also begin their reviews, and there will be two types of evaluation – one on the applicants themselves and one on the strings applied for”. The latter will include examination on the TLD’s likelihood to cause stability problems in the DNS, and the results of the initial evaluation are expected to be published in December or January.
In addition, the organisation can expect objections through the Government Advisory Committee. For brand owners, however, the comment and objection periods are the immediate tools available to them. The first step, then, is to identify which strings to focus on.
While there is no need to rush to judgment on the list, it is equally important that proper consideration is given to potential conflicts, with Melbourne IT Digital Brand Services’ Stuart Durham telling WTR: “Looking for identical strings is easy, as are ones that are similar to your application or trademark. The more difficult thing is assessing strings that may have an impact on, or relevance to, your industry. For instance, if you are in finance, you will be interested in the plans for ‘.bank’. We estimate it can take up to seven hours to fully assess each application to ascertain its plans.”
And while a two-month comment period and seven-month formal objection period may seem like plenty of time, Brian Winterfeldt, partner at Steptoe & Johnson, therefore stresses the need to plan now for reviewing “the announced gTLD strings, tracking applications of interest and taking action in connection with the same”.
Importantly, care must be taken with respect to the substance of objections and comments, so a review of ICANN’s enforcement mechanisms and processes is critical. This is particularly important for the comment period. While a trademark owner may not be able to object to the proposed ‘.sucks’ string, for example, on the basis of similarity to its trademark, it may want to comment on the proposed gTLD outside the formal objection procedure. And as Durham notes: “If you are going to file a comment, you have to make it a good comment.”
Long term there are a range of rights protection mechanism tools available to brand owners, with Winterfeldt pointing to the need to prepare a longer-term strategy that includes participation in “strategic second-level enforcement mechanisms such as the trademark clearinghouse and select sunrise registration periods, and adapting existing enforcement strategies to encompass the new gTLD space, with an eye to identifying new registries in which enforcement should be a priority for their brands. Also ensure your organisation is prepared to monitor and track ICANN developments relevant to their organisation’s internet presence and enforcement efforts, allocating resources for education, training and strategic planning”.
Over time the number of brand owner applicants is also likely to have an impact on the make-up of ICANN (with Rod Beckstrom, president and CEO, predicting that “it will enrich ICANN to have new voices”).
In the meantime, a number of tools are available to brand owners as they scrutinise the list of applications and plot their next move. First up – the comment and objection periods.
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