Written by Jamison Arterton

As promised, ICANN reopened the TLD Application System (“TAS”) on May 22, 2012.  Registered users are now able to log in and complete their applications.  ICANN has indicated that the system will remain open until 23:59 GMT/UTC on Wednesday, May 30, 2012. Continue Reading ICANN’s Appoints Independent Objector and Gets TLD Application System Back Online

Written by Jamison Arterton and Geri Haight

As previously posted, ICANN’s TLD application system (“TAS”) has been plagued by a “technical glitch ” that has caused the online application system for new generic top level domains (gTLDs) to be taken offline in order to protect the confidential information of the applicants.  Despite prior indications that the system would reopen in late April, the TAS system remains offline.

ICANN recently announced that it has now provided notification to all users as to whether their confidential information might have been impacted by the system error.  Such notifications were sent to the 1,275 registered TAS users in four categories: Continue Reading gTLD Launch: An Update on the TAS Interruption

Written by Jamison Arterton

As ICANN struggles to get its application system back online, companies have begun lining up to make a profit off of the peculiarities of the application process itself.  Pool.com, a domain name drop catch service provider, has recently announced a “Digital Archery Service” which, it claims, can help gTLD applicants get their applications into the top of the application queue (or into the first “batch” of applications to be processed by ICANN). Continue Reading gTLD Batching Update: Digital Archery Services Available at a Price

Written by Jamison Arterton

ICANN has temporarily taken the TAS application system for new generic top level domains (gTLDs) offline due to a “technical glitch.”  According to ICANN, a technical problem allowed a limited number of users to view other users’ file names and user names.  To protect the applicants’ data, on April 12, 2012, ICANN took the application system offline until the problem is resolved.  Two weeks later, the TAS system still remains offline.  ICANN claims that it has narrowed the pool of affected applications and the associated posted documents and hopes to reopen the system on April 27, 2012. Continue Reading The Latest From ICANN: New gTLD Application System Shut Down

Written by Jamison Arterton

On March 29, 2012, the user registration window closed for anyone planning to apply for a new generic top level domain (gTLD).   Applicants who registered prior to March 29, 2012, however, still have until April 12, 2012 to complete their application.  As of March 25th, ICANN had 839 registered users in the system.  Given the number of registered users, ICANN has announced that if it receives significantly more than 500 applications, it will begin processing those applications in batches.  Under this “batching process,” applications will be divided into groups of 500 applications to be evaluated at a time. Continue Reading The Batching Games: ICANN’s Plan to Process New gTLD Applications

Written by Jamison Arterton

ICANN has recently appointed the World Intellectual Property Organization (WIPO) to be the exclusive provider of dispute resolution services when a third party files a formal “Legal Rights Objection” or “LRO” to a pending application under the new gTLD program. 

In assessing the validity of an LRO, the WIPO panel will decide whether the applied-for gTLD (i) takes unfair advantage of the unique character or the reputation of the objector’s registered or unregistered trademark, intergovernmental organization (IGO) name or acronym, or (ii) without justification, the gTLD impairs the distinctive character or the reputation of the objector’s mark, IGO name or acronym, or (iii) creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark, IGO name or acronym. Continue Reading WIPO Named Exclusive Arbitrator of “Legal Rights Objections” for New gTLD Program

Written by Jamison Arterton

Trademark owners, mark your calendars.  ICANN announced that Tuesday, May 1, 2012 will be “reveal day.”   On May 1st, ICANN will publicly post the gTLD character strings that have been applied for in connection with its new gTLD program.   Following publication, interested parties may submit comments related to proposed new gTLDs, which will be considered by the independent evaluators assessing each application.  During the comment period, trademark owners can submit comments regarding potential trademark infringement, dilution and related concerns raised by particular applications for gTLDs.  As of now, ICANN has set June 30, 2012 as the close date for the open comment period. Continue Reading The Latest on the New gTLD Launch: “Reveal Day” Set For May 1st

Written by Jamison Arterton

Last week, ICANN began accepting applications for its new gTLD program. ICANN has posted a series of extremely comprehensive materials outlining the registration and evaluation process.  A copy of those materials can be found here.  The following brief summary of the application process is geared toward trademark holders seeking to protect their trademark rights during this process:

The user registration period for new gTLD applicants is open until March 29, 2012.  The application period itself closes on April 12, 2012.  Applicants wishing to register a new gTLD extension must provide the following:

  • Payment of $185,000 filing fee (a non-refundable $5,000 registration fee is due at the time of filing and a subsequent $180,000 fee is due at the time of application submission)
  • Satisfactory completion of background screening for criminal record or history of abuse of domain names
  • Technical requirements to operate the TLD in a secure and stable manner
  • Financial requirements to operate the TLD
  • Business and Marketing Plan for use of the TLD
  • Proposed benefits and support of TLD for the global internet public interest.

Applicants are also required to submit two financial projections: one demonstrating the most likely scenario of registration volume, fees and costs during the start-up period and first three years of operation, and the second showing the “worst case scenario” for costs and projections. Continue Reading .Anything 101: A Brief Guide to the New gTLD Program

ICANN will start accepting applications for new gTLDs on January 12, 2012.  But not before further public opposition to the program builds.  Most recently, the United Nations, International Monetary Fund and a host of other intergovernmental organizations (“IGOs”) have joined the growing list of opponents to ICANN’s new program.  A recent letter sent to ICANN on behalf of the IGO community indicates that their concerns “relate to the increased potential for the misleading registration and use of IGO names and acronyms in the domain name system under ICANN’s significant expansion plans.”  This is the latest in a rising wave of opposition to the rollout of the new gTLD program.  In early December, the FTC Chairman told the House Judiciary Committee that this program could be a “disaster.” The U.S. Senate Committee on Commerce, Science and Transportation subsequently suggested that ICANN to scale back the gTLD program or postpone the launch to 2013.

As part of the application process, ICANN will publicize a list of those applying for a top-level domain, thereby eliminating proxies, and will allow third-parties to file formal objections to such applications.  Critics, however, remain skeptical that such measures will be sufficient to combat the risk of cybersquatting and fraud that the new gTLD program potentially poses.

Written by Jamison Arterton

In opposition to the imminent launch of the new  .XXX generic top level domain (gTLD), two adult entertainment companies have filed suit in federal district court in Los Angeles against the Internet Corporation for Assigned Names and Numbers (ICANN) and ICM Registry, the sole operator of the .XXX domain name registry. (For background on the .XXX launch, click here,  here and here).  The complaintwas filed by adult filmmaker Digital Playground Inc. and Manwin Licensing International SARL, the owner of a the domain names YouPorn.com, Pornhub.com, xTube.com, and Brazzers.com, among others, and manages Playboy Enterprises Inc.’s brand online.  Digital Playground and Manwin alleges, in essence that ICANN and ICM Registry are engaged in monopolistic conduct, price gouging, and anticompetitive and unfair practices.  Establishing the new .XXX scheme, the plaintiffs charge, unnecessarily forces owners of trademarks and domain names in other TLDs to purchase defensive .XXX domain names and incur associated costs.  While ICM has stated that the claims are baseless and that it will vigorously defend this matter, this latest lawsuit is likely a preview of what will come with the launch of ICANN’s new gTLD program.  See here.