On 20 June 2011 at the Singapore conference, Icann’s Board of Directors voted at a large majority in favour of the launch of the new gTLDs. After heated exchanges between government representatives the day before, and in spite of persistent disagreements, the Board decided to move forward and approve the current Applicant Guidebook. The Board nevertheless indicated that modifications would be made in the forthcoming weeks and months.
The principal stumbling blocks related to the protection of trade marks during the Sunrise periods and to concerns raised by the competition authorities in the EU and the US in relation to the separation of the duties of the Registry (organisation in charge of the management of the extensions) and of the Registrar (company in charge of selling the domain names). The measures contested are the following:
– Obligation to provide proof for marks to be protected during the Sunrise periods (TLD launch period) and under the Uniform Rapid Suspension System (the URS), an expedited procedure for resolving disputes in clear-cut cases of cyber-squatting. It should be noted that all registered trade marks may be recorded in the Trademark Clearinghouse, without it being necessary to provide proof of use;
– End of vertical integation (separation of registry and registrar functions), whereby one company will be able to propose both services under certain conditions.
New gTLDs: the dates to be retained
12 January 2012: launch of the application submission period
12 April 2012: end of the application submission period
End of April 2012: publication of applications
November 2012: publication of the first results of the initial evaluations
What strategies should brand owners adopt?
The programme is now launched and it is necessary for trade mark owners to take a position quickly on the possibility of applying for an extension such as .brand or .company.
Indeed, the application submission period commences in less than 7 months and will only last 3 months.
The decision making processes and work involved in preparing the applications will necessarily take time. It is therefore advisable for brand owners to start examining the opportunity of applying for such an extension straightaway.
What about the future?
Icann has specified that the next cycle of applications will only be launched once the majority of applications from the first cycle have been processed and the stability of the DNS has been verified to ensure that it is not compromised by the new extensions granted. Depending on the number of applications submitted during the first cycle (expected to total between several hundreds to several thousands), it is probable that the next cycle will not be launched for several years.