Although the Trade Mark Clearing House is now open for
registration of trade mark holders' rights (
see last update), the proposed 23 April date for the
commencement of contracting with the first successfully examined
gTLD applicants was not met and this process will now begin in
June. ICANN's newly announced plan is to start
pre-delegation testing, to launch the sunrise and trade mark claims
systems in the Trade Mark Clearing House and also to commence the
Uniform Rapid Suspension system from the beginning of July.
It is therefore possible in theory that the first of the new
generic top-level domains (gTLD) could go live as
early as August, but considering the delays this remains to be
seen.
The reality is that ICANN still has a lot of work to do to get the
system in place. Only around 13% of applications have been
evaluated to date although this phase is due to be completed by 30
August, 2013. It is worthwhile noting that 55 of the approximately
1,900 new gTLD applications have already been withdrawn. In
addition more and more issues are being raised that threaten to
de-rail the timetable further.
The Government Advisory Council (GAC) advised ICANN in March that
it considered that a large number of the new gTLD applications
should either not be permitted on public policy grounds (for
example because they are geographical or sensitive terms) or should
be subject to additional safeguards, in particular that ICANN
should not permit singular and plural versions of the same domain
strings. ICANN has as a result announced a window of opportunity
until 4 June 2013 for stakeholder comment and consideration as to
how this advice should be treated. It looks as if ICANN is not
about to take the GAC advice lying down.
A further debate is about to ensue concerning ICANN's proposal
that where there has been a finding of an abusive string that a
trade mark owner may enter up to 50 confusingly similar variations
into the Trade Mark Clearing House. While the extension of the
initial "exact match" policy is something that trade mark
owners have been seeking for some time, non-commercial stakeholder
groups have questioned this approach largely on the basis that it
extends trade mark owners' legal rights and has the potential
to cut across the rights of non-commercial users without any
consideration of the context of use.
At the date of writing ICANN had not yet responded to these claims
but there is clearly merit on both sides of the debate. It will be
interesting to see whether ICANN seeks to balance these differing
interests or if at this late stage it somehow manages to sweep the
issue under the carpet in an attempt to reel in the fast moving
target that has become the new gTLD "go live"
date.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.