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Focus: .YOURBRAND domain name applications starting soon

25 November 2010

In brief: As the opening for applications for the new generic top level domain names (eg .YOURBRAND) draws closer, Partner Tim Golder (view CV), Senior Associate Jesse Gleeson and Law Graduate Nadia Guadagno look at the proposed final version of the Applicant Guidelines recently released by the Internet Corporation for Assigned Names and Numbers and recommend that companies start preparing now.

This article is a follow-on to our previous Focus: The domain name floodgates are about to open!

How does it affect you?

  • As the technical and financial requirements are onerous, companies/organisations wishing to apply for a new generic top level domain name (gTLD) should familiarise themselves with the application process and begin preparation.
  • Companies/organisations wishing to register their domain name within a new gTLD should monitor the application process, consider what gTLD(s) would be most appropriate for them to register their company name/trade mark in and be aware of any sunrise periods that may apply to them as a trade mark owner.
  • All trade mark owners should review the new gTLD applications once they are listed on the Internet Corporation for Assigned Names and Numbers (ICANN) website to see whether any infringe their trade mark and consider whether to file an objection.

Background

gTLDs are top level domains, such as .com. There are currently 21 gTLDs. The introduction of the 'New gTLD Program' will significantly increase the number of gTLDs and subsequently increase the number of possible registries in which to register a domain name.

ICANN has recently released the proposed final version of the Applicant Guidebook. The previous draft of the Applicant Guidebook attracted a great deal of public feedback and participation, as well as review and analysis by several working groups to resolve key issues. While the substance of the application process has remained the same, a number of changes have been made and these are discussed below.

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Timeline to launch

Stakeholders and interested parties can submit comments on the final version of the guidebook until 10 December 2010 when the ICANN Board will meet to review the feedback and decide if any further amendments are required. It will also make a decision regarding the timing of the launch of the New gTLD Program.

Once the final version of the Applicant Guidebook is approved, a four-month global communications campaign will begin. The campaign's purpose is to raise awareness of the details of the New gTLD Program and how to apply. If the Applicant Guidebook is approved in its current form, or only minor changes are required, the communications campaign could start as early as January 2011, with the application process opening as early as May 2011.

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Significant changes from version 4

While the substance of the application process is mostly the same, a number of significant changes have been made to the areas of the eligibility criteria and dispute resolution procedures.

Eligibilty criteria

The final version of the Applicant Guidebook states that applications will not be considered from yet-to-be-formed legal entities, or applications pre-supposing the future formation for a legal entity (such as a pending joint venture)

Also, the background screening criteria have been refocused to cover only two areas:

  • general business diligence and criminal history, and
  • history of cybersquatting behaviour.

As a result, the scope of the background screening has been narrowed and it appears areas such as intellectual property violations and convictions for crimes that do not fit within the listed criteria (see below), which were included in the fourth version of the Applicant Guidebook, will no longer be specifically screened for and considered as disqualifying factors.

The application form will require applicants to provide information on the legal establishment of the applying entity, as well as the identification of its directors, officers, partners and major shareholders. Background screening will be conducted at both the entity and individual level.

On the issue of the background screening of general business and criminal history, applying entities that are publicly traded corporations and in good standing on any of the world's largest 25 stock exchanges (as listed by the World Federation of Exchanges) will be deemed to have passed this screening. This is because the required due diligence that an entity must undergo before being listed on an exchange, and the ongoing scrutiny an entity is subject to as a publicly listed corporation, meet or exceed the screening ICANN will perform.

For applicants who are not listed on one of the 25 listed stock exchanges, ICANN will submit identifying information for the entity, officers, directors and major shareholders to an international background screening service, which will use publicly available information to conduct an inquiry using certain criteria. ICANN has stated that the criminal history criteria will be aligned with the 'crimes of trust' standard sometimes used in the banking and finance industry. Applicants with certain types of confirmed convictions will be automatically disqualified and, in other cases, ICANN has a discretion to deny the application. Applicants must also provide detailed explanations in their applications if they meet any of those criteria. Crimes of a personal nature that do not meet any of the listed criteria will not be considered and do not need to be disclosed in the application.

ICANN will also screen applicants against UDRP cases and legal databases for criteria that may indicate a pattern of cybersquatting (three or more decisions against the applicant, with one occurring in the past four years, will generally be considered to constitute a pattern). Applicants are also required to make specific declarations regarding such activities in their application.

Dispute resolution procedures

The Morality and Public Order ground of objection has been amended to be entitled the Limited Public Interest Objection. An applied-for gTLD string may be objected to on the basis it is contrary to general principles of international law for morality and public order. The final version of the Applicant Guidebook provides examples of instruments that contain such general principles, which includes the Universal Declaration of Human Rights and the International Covenant on Civil and Political Rights. National laws not based on principles of international law are not a valid ground for such an objection. An appointed panel will first take a 'quick look' review; if the objection is manifestly unfounded, it will be dismissed (and it is currently contemplated the filing fee will be refunded). ICANN has provided examples of where such an objection may be an abuse of the right to object, including where there are multiple objections filed by the same, or related, parties against a single applicant, or an objection that attacks the applicant rather than the applied-for gTLD string.

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Implications

As the application and operational requirements are very onerous, companies and organisations interested in registering a new gTLD should be vigilant in monitoring the status of the application process and begin preparing themselves now to ensure they are fully informed and ready when the application process opens.

There are a number of ways to start preparing:

  • Engage in the ICANN global communication campaign to ensure you are fully aware of the requirements of the application process and the deadlines for submitting an application.
  • Take part in workshops run by local domain name registries and operators.
  • Decide on a gTLD string to apply for (for example .LAW or .ALLENS).
  • Review the Evaluation Questions and Criteria and the obligations of a registry operator in the ICANN Registry Agreement, which are available in the final Applicant Guidebook on the ICANN website. This will provide guidance as to the information that will need to be provided and the type of preparation a company/organisation will need to undertake to become capable of being a registry operator (however, be mindful it is possible some changes may still be made to the final version of the Applicant Guidebook).

Once the application process has closed, all companies and organisations should review the complete applications which will be posted on the ICANN website:

  • to check whether any of the applied-for gTLD strings infringe their trade marks and consider whether they should object on this basis;
  • to check whether any of the applied-for gTLD strings should be objected to on any other ground (ie it is similar to another gTLD, it is contrary to general principles of international law for morality and public order or it has reason to be opposed by a significant proportion of the community); or
  • to consider whether they should apply for a domain name within any of the applied-for gTLDs once they 'go live'.

The New gTLD Program presents an unprecedented opportunity for companies and organisations to increase their marketing reach. However, as we have noted, getting through the application process is no mean feat.

Being well-informed and planning ahead will be vital for a successful application.

For further information, please contact:

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