Internet Corporation for Assigned Names and Numbers

Defensive Applications for New gTLDs

Comment/Reply Periods (*) Important Information Links
Comment Open: 6 February 2012
Comment Close: 27 February 2012
Close Time (UTC): 23.59 UTC Public Comment Announcement
Reply Open: 28 February 2012 To Submit Your Comments (Forum)
Reply Close: 20 March 2012 View Comments Submitted
Close Time (UTC): 23:59 Report of Public Comments
Brief Overview
Originating Organization: ICANN
Categories/Tags: Top-Level Domains
Purpose (Brief): The New gTLD Program features carefully crafted, new protections for trademark owners and consumers. When considering applications for new top-level names, the process is designed to protect these important interests through independent objection and dispute resolution processes (and other processes). However, as the time of the opening of the new gTLD application window drew near, parties stated their perception that they will need to submit "defensive" gTLD applications as a means to protect their trademarks. ICANN is seeking public comment on the sources of this perception and how it can be addressed.
Current Status:

ICANN is seeking public comment on the adoption of enhanced protections, to which some stakeholders recently indicated that there are concerns about the perceived need for "defensive" applications at the top level, and encouraged ICANN to ensure that the program was launched in a manner that protects intellectual property rights.

Next Steps:

ICANN will review all submitted comments, analyze, and take steps that could remediate and alleviate the concerns on "defensive" gTLD applications.

Staff Contact: Kurt Pritz Email: kurt.pritz@icann.org
Detailed Information
Section I: Description, Explanation, and Purpose

The New gTLD Program was designed to increase competition and choice by introducing new gTLDs into the Internet’s addressing system. The Application Submission period for gTLD applications opened on 12 January 2012 and will close on 12 April 2012.

During the development of the New gTLD Program, some trademark holders indicated that they were concerned about the perceived need for defensive applications for top-level names, i.e., names applied for as registries in the new gTLD program.

This concern prompted discussion and consideration of several mechanisms during the development of the policy for the introduction of new gTLDs. Community discussions during the implementation of the program yielded a suite of additional trademark protections for new gTLDs. These are the rights protection mechanisms that were developed over a period of years by a set of intellectual property experts convened by ICANN and later enhanced by governments that participate through ICANN's Governmental Advisory Committee.

Despite the adoption of these enhanced protections, some stakeholders recently indicated that they are concerned about the perceived need for defensive applications at the top level and encouraged ICANN to ensure that the program was launched in a manner that protects intellectual property rights.

This announcement briefly reviews the existing protections against infringement of rights at the top level. Public comment is requested as to why there may be a perceived need for defensive new gTLD applications and steps that could be considered to help alleviate this concern.

Top-Level Protection: The Objection and Dispute Resolution Process

The New gTLD Program implements consensus policy advice that new gTLDs must not infringe the existing legal rights of others. Based on input received during public consultations and extensive research, a formal objection and dispute resolution process was developed for the protection of certain legal rights. This process allows a party to challenge a gTLD application on the grounds that it infringes on the party's established legal rights (e.g., trademark rights). The program has established standing requirements and other criteria that must be met in order to prevail in a Legal Rights Objection and has designated the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) as the dispute resolution service provider.

In addition to the objection process, there is also a formal process for governments, through ICANN's Governmental Advisory Committee, to provide advice to the ICANN Board in relation to the approval of an application. Through this process, Governments can directly advise the ICANN Board to reject an application for a top-level domain.

Details on all objection and dispute resolution processes can be found in Module 3 of the gTLD Applicant Guidebook.

The objection and despite resolution mechanisms:

  • ensure that objective standards and processes are in place,
  • provide parties with a cost-effective alternative to initiating action in court (objections are resolved on a loser-pays basis),
  • ensure that subject-matter experts make any determinations on the disputes after considering all of the evidence,
  • provide sufficient time (seven months) for entities to consider whether to lodge an objection,
  • ensure that parties with legitimate interests have access to obtaining domain names, and
  • create independence so that the applicants, the community and ICANN have the benefit of neutral expert opinion.

To be effective, the availability of this mechanism must be adequately and extensively communicated. The objection filing period will last for approximately seven months and the New gTLD Communications plan provides for significant, ongoing outreach to raise awareness of this process.

Additional Considerations

The objection process is designed to protect important interests and rights, such as trademark rights. This process is part of a suite of protections that operate for top and second-level names. Nevertheless, there are reports that parties believe that they will need to submit defensive gTLD applications to protect their trademarks, regardless of whether they are interested in using or developing a gTLD.

ICANN seeks public comment on the sources of this perception and how it can be addressed. In addition, ICANN wishes to ensure that trademark holders are aware of the options and mechanisms available to them under the new gTLD program, and seeks feedback on ways to improve its outreach efforts to those affected.

Section II: Background

The New gTLD Program was designed to increase competition and choice by introducing new gTLDs into the Internet’s addressing system. The Application Submission period for gTLD applications opened on 12 January 2012 and will close on 12 April 2012.

During the development of the New gTLD Program, some trademark holders indicated that they were concerned about the perceived need for defensive applications for top-level names, i.e., names applied for as registries in the new gTLD program.

This concern prompted discussion and consideration of several mechanisms during the development of the policy for the introduction of new gTLDs. Community discussions during the implementation of the program yielded a suite of additional trademark protections for new gTLDs. These are the rights protection mechanisms that were developed over a period of years by a set of intellectual property experts convened by ICANN and later enhanced by governments that participate through ICANN’s Governmental Advisory Committee.

Section III: Document and Resource Links
Details on all objection and dispute resolution processes can be found in Module 3 of the gTLD Applicant Guidebook.
Section IV: Additional Information
The New gTLD Program website: http://newgtlds.icann.org/en/

(*) Comments submitted after the posted Close Date/Time are not guaranteed to be considered in any final summary, analysis, reporting, or decision-making that takes place once this period lapses.

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