ICANN, the Internet Corporation for Assigned Names & Numbers, has embarked on a programme that could see up to 500 new gTLDs created in 12 months from summer 2009.

To assist those interested in applying for a new gTLD franchise, ICANN has now published an “Applicant Guidebook”, released on 24 October 2008. It will also help the hundreds of trade mark owners who don’t want to apply, at least in the first round, but who are concerned at protecting their trademarks in a process that not many of them welcome.

There are over 200 pages of information in the booklet and the accompanying Memoranda. Although it comes with the health warning that ”Applicants should not rely on any of the proposed details…as the program remains subject to further consultation and revision”, it indicates how ICANN is thinking and what they may do. Here are our selected highlights:

• There is no announcement on dates: we expect the 45 day Application Period will open in May or June next year but this is not confirmed.


• The official application fee may be $185,000. This fee must be submitted at time of application. There’s nothing about refunds if you are unsuccessful.


• A panel of independent evaluators will review every application to ensure that “String Contention” for example with ccTLD extensions, names protected by Governments and other applications are avoided and to check that the applicant has the requisite technical and financial capability to operate a registry.


• All complete applications will be published on the ICANN website when the application period closes. There will be a mechanism for public comment on each application. The evaluators will take account of these comments which will also be passed to the Dispute Resolution Providers (see below).


• The fastest route for an application moves from application via ICANN’s secure TAS (TLD Application System) through to Initial Evaluation and then “Transition to Delegation” which includes the execution of a registry agreement with ICANN prior to delegation. It can be thrown off course by either a String Contention or an Objection which will lead to Extended Evaluation, or Dispute Resolution.


• To resolve disputes ICANN has appointed three dispute resolution providers. The International Chamber of Commerce (ICC) in Paris has agreed in principle to administer Morality and Public Order Objections and Community Objections. The Arbitration and Mediation Center of the World Intellectual Property Organization in Geneva has agreed in principle to administer Legal Rights Objections. The International Centre for Dispute Resolution (ICDR) in New York has agreed in principle to administer disputes relating to String Confusion Objections. This means that WIPO will be looking at objections from trade mark owners if someone applies for a gTLD that matches a registered mark.


• All applicants must designate their application as either “Open” or “Community based”. An Open application may or may not have “a formal relationship with an exclusive registrant or user population”. A Community based application must “demonstrate an on-going relationship with a defined community that consists of a restricted population”. Previously ICANN has said that a Community based application might trump an Open application if there was a string contention. This is not mentioned.

 

• Each application must be accompanied by documents that show:

Proof of legal establishment
Proof of good standing
Financial standing
The ability to fund basic registry operations


• There are special requirements for applicants for new gTLD strings that are IDNs to ensure conformity with technical protocols.


• If you want to file a formal objection to an application, the non-refundable DRS Filing Fee will be in the range of $1,000 - $5,000. There will then be an Adjudication Fee. ICANN’s estimates for these costs range from $2,000 up to a massive $122,000 depending on the provider and the process.


• ICANN hopes to open the next application round within one year of the close of applications for this period.



• Supporting the booklet are a series of Memoranda covering, for example:

How contested strings (or names) will be determined. It is here that the possibility of auctions are mentioned;
How applications for geographic names will be considered;
Technical requirements for new names that encompass internationalized domain names;
The rights of intellectual property holders;
How morality and public order objections can be raised;
The cost of the evaluation process and how it is constructed.

 

However, despite the detail of these Memoranda, they are more a rehearsal of principles than an account of process or policy.

ICANN’s cost calculations set out in the booklet indicate that it hopes to receive 500 applications. If even 20% of these are successful, the impact on trade mark owners is going to be massive. The question now for the IP community is just how much pressure can they bring to bear to minimize the negative effects of this force.

To see the booklet, go to: http://www.icann.org/en/topics/new-gtld-draft-rfp-24oct08-en.pdf

Nick Wood
Managing Director
Com Laude
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24 October 2008