By Trevor Little
June 14 2012
So the day many had been waiting for (albeit for longer than originally intended) finally arrived and details of the 1,930 gTLD applications were made publically available. ICANN’s press conference to mark the publication proved a lively affair – with news on the uniform rapid suspension system (URS) and likelihood of changes to the batching process, in addition to the revelation of who has applied for what.
First, the headline statistics. Geographically, North American applicants led the way (911), followed by Europe (675). Africa provided 17. Of the 1,930 applications, 84 were designated as community-based, there were 116 applications for internationalised domain names and 230 strings had more than one applicant (in total there were 751 applications for contended strings). The top contested strings were ‘.app’ (13 applicants), ‘.home’ (11), ‘.inc’ (11) and ‘.art’ (10).
As to who has applied for what, the list will be the subject of much scrutiny over the coming days. To again select a few highlights, Amazon.com made more than 70 applications (spanning key brands such as ‘.kindle’, as well as generic terms such as ‘.music’ and ‘.book’), while Google (through Charleston Road Registry Inc) exceeded 100 applications. Industry-wise, the financial, vehicle and cosmetics sectors figured highly. Luxury goods brands are also early embracers of the expanded domain space, with ‘.coach’, ‘.gucci’, ‘.hermes’ and a number of Richemont brands (eg ‘.montblanc’ ‘.cartier’ and ‘.chloe’) in the mix. Meanwhile generic applications far outweighed those for ‘.brands’, with initial estimates suggesting 15% of applications were for the latter. Some big names were also absent. Facebook had previously announced it was not making an application, but other absentees included Porsche, Twitter, Coca-Cola, Pepsi, eBay and, from the luxury sector, LVMH. The full list is available here.
Reviewing the applications, Steptoe & Johnson’s Brian Winterfeldt told WTR: “There were no huge surprises, and brands from multiple industries applied, including non-technical industries (ie, Johnson & Johnson, Wal-Mart, and Firestone). Indeed, there was no dominant industry represented, although Amazon and Google appear to have applied for multiple TLDs for their brands and for generic terms related to their business models. There were several potentially objectionable strings, such as ‘.sex’, ‘.porn’, and ‘.sucks’ especially, and several heavily-regulated industry terms such as ‘.bank’ and ‘.insurance’, but it is too early to tell if the GAC will object to any of these strings because we have not had a chance to fully review their applications to determine if they have government or industry support, or were applied for by a reputable applicant.”
The reveal day also marked the commencement of the 60-day comment and seven-month objection periods, with ICANN predicting that the first TLDs will be live in the first quarter of 2013. As such, discussion at the list’s launch in London soon turned to both the digital archery batching process and the rights protection mechanisms available to trademark owners.
On the question of whether ICANN felt the current protection mechanisms were sufficient to tackle abuse, posed by Hogan Lovells’ David Taylor, Rod Beckstrom, president and CEO of ICANN, was evasive, stating: “What I can say is that I have witnessed a thorough, deliberative on-going, transparent process to develop mechanisms to protect rights holders.” However, he had been more expansive earlier in the press conference, stating: “There are extensive IP protection mechanisms in the programme. Two - the UDRP and GAC objections - are well established, but seven new protections - public comments on applications, the GAC early warning, community objection processes, the URS, a sunrise period, the trademark clearinghouse and post-delegation dispute resolution process - came directly from the good work of the IP community.”
While ICANN intends to outline the trademark clearinghouse plans more fully at its Prague meeting this month (it did confirm it is on track to be in operation by October), Kurt Pritz, senior vice president, stakeholder relations at ICANN, was less bullish about progress on the URS, noting: “Not as much progress has been made. After years of experience with TLDs it was thought that a faster, cheaper mode of takedown would be preferable in clear-cut cases. We have shopped this around to different potential providers, but we have found our cost targets may have been off. We wanted it to cost in the region of $300-500, but it looks like it would be double that. So we need to take that back to the community.”
The other ICANN mechanism under intense scrutiny is the batching process, with a rising number of calls to scrap the current digital archery system. While the process is now underway, the current plans do not seem set in stone - but any changes seem dependent on the suggestion of a valid, workable alternative. ICANN’s Cherine Chalaby explained: “The issue is one of fairness and balance. Now that the list has been revealed, and there are a number of contentious strings, we do need to look at the number of batches. But here comes the difficult question – how do you balance stability of process and also listen to what the community wants? We are definitely open-minded and we will have a discussion in Prague… We will look at valid alternatives. Our ears are open – but none of the suggestions received so far have been complete.”
This sentiment was echoed by Beckstrom, who stated: “No one has suggested an option that is fairer. The system was created to provide a level playing field and there hasn’t been a better proposal at this time.” Regardless of how the URS develops and whether the batching process changes, applicants and brand owners alike will be scrutinising the full list to see whether there is a need to engage further in the comment or objection process.
What is clear, however, is that the online shake-up has moved a step closer, requiring the attention of trademark counsel. David Weslow of Wiley Rein concludes: “Taking into account the number of strings for which there are multiple applications, we may see over 1400 ‘.generic’ or ‘.category’ gTLDs go live over the next few years. This number is a good deal higher than what was anticipated as recently as a few years ago, though astute ICANN observers likely noticed significant increased interest in the gTLD programme over the last six months. Considering that there are currently around 350 million websites on the internet using the existing 274 TLDs (22 gTLDs and 252 ccTLDs), the gTLD programme will very likely result in a game-changing expansion of the internet. With 101 applications by Google, 76 by Amazon and multiple applications by other consumer-facing companies such as Dish Networks, General Motors, Microsoft and others, the list of published applications suggests that a wide breadth of marketing resources will be committed to promotion of the new gTLDs. Therefore, trademark owners of all sizes will need to evaluate the potential impact of the new gTLDs on online branding and brand protection programs.”
As to how to approach that evaluation, that is for the next blog…
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