10 Things Trademark Owners Should Do on ICANN’s Domain Name ‘Reveal Day’

June 7, 2012

By Doug Isenberg

After years of planning, months of applying and weeks of delays, ICANN is set to disclose the identities of approximately 2,000 new applied-for global top-level domain names (gTLDs) on June 13, 2012 — a date known as “Reveal Day.”

ICANN has stated that the application results will be posted on Reveal Day here: http://newgtlds.icann.org/en/program-status/application-results

Reveal Day is likely to create a lot of confusion among all except those who have followed these developments most closely. So, in anticipation of widespread misunderstandings among trademark owners, the press and Internet users in general, here is a short list of the most important things to do on Reveal Day:

  1. Review the list of new gTLDs published by ICANN. If past performance is any indication, there will likely be some technical delays in accessing all of the published information, especially on Reveal Day itself. However, despite everyone’s curiosity, there is no urgency in gaining access to the information immediately (and some of it already has been voluntarily disclosed by applicants), so any slight delays should not create any meaningful concerns.
  2. Don’t panic. Remember that no gTLD on the application list has been approved. That is, no new gTLDs will become operational on Reveal Day. And, before any new gTLDs go live, they must go through a rigorous approval process at ICANN and survive any objections or legal challenges. It will certainly be 2013 before any new gTLDs are actually available for registration.
  3. Begin to consider whether you might want to file any objections to gTLD applications, including a “legal rights” objection (that is, where “the applied-for gTLD string infringes the existing legal rights of the objector”) or a “community objection” (that is, where “there is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string may be explicitly or implicitly targeted”).
  4. If you applied for one or more gTLDs, prepare to respond to any objections. As you know, filing an application was just the start of your process. Now, you need to see your application through to approval. Preparing in advance (that is, now) for potential objections could increase the likelihood of your success later.
  5. Watch for more details about the Trademark Clearinghouse. Designed to provide limited protections for trademark owners once registrations within the new gTLDs are available, ICANN’s new Trademark Clearinghouse will allow trademark owners to submit their marks for inclusion in a database. As I have said before, the Trademark Clearinghouse will be of little value, but it is something that all trademark owners should consider.
  6. Remember the UDRP. All registry operators for new gTLDs will be required to implement the Uniform Domain Name Dispute Resolution Policy (UDRP). As I have said before, the UDRP is — in the words of the World Intellectual Property Organization (WIPO) — “the only proven mechanism in place to absorb the impact of gTLD expansion.” Therefore, trademark owners can take some comfort that this useful legal tool will still be available to them as the cybersquatting problem surely explodes.
  7. Don’t get excited about the URS. Once touted as an even better legal solution to cybersquatting than the UDRP, the Uniform Rapid Suspension System (URS) is of limited value to trademark owners because it is not likely to be much quicker or much less expensive than the UDRP. Plus, the URS remedy is much more limited than in UDRP cases, because trademark owners can only get domain names suspended — not transferred — under the URS. In any event, the URS as a viable tool is still unknown given that ICANN has not yet announced whether any dispute resolution service is willing to serve as a provider (and the targeted low fees surely are discouraging service providers from signing up to administer the URS).
  8. Don’t question whether you should have applied for a gTLD of your own (that is, if you didn’t actually do so). It’s a moot point now. But, there will be opportunities in the future to apply again (according to ICANN, “as expeditiously as possible,” whatever that means) — and, perhaps, learn from the many lessons that will emerge from this unprecedented experience.
  9. Ignore the press. As a former newspaper reporter and magazine editor, I understand and appreciate the difficulties that the media have in generating interesting, relevant, timely and accurate news articles. The new gTLD process is a complicated one, and the first media reports are likely to be incomplete, misleading, sensational and perhaps even inaccurate. Fortunately, it won’t matter what any reporter or blogger (including yours truly!) has to say about the process. What matters is how you will respond to it.
  10. Talk with your attorney. Now. I know, this probably sounds self-serving — and, maybe it is. But, it’s also good advice. An attorney who knows about gTLDs, domain name disputes and Internet law in general can help guide you through one of the most important changes that has taken place online since perhaps the creation of the World Wide Web itself.

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