Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.

Summer 2012 Issue

gTLD Update and Upcoming Deadlines

On June 13, 2012, ICANN revealed the 1,930 applications for new generic top-level domains (“gTLDs”).  The list of new gTLD applications is located on ICANN’s website at

We recommend that trademark owners review the list to identify any potentially problematic gTLDs and to consider options for objecting.

At this stage in the gTLD evaluation period, there are two ways for trademark owners to voice concerns or dispute an application:  submitting a Public Comment and/or filing a formal Objection.

Public Comment Period Extended to September 26, 2012
The Public Comment period opened on June 13, 2012.  The deadline to submit a Public Comment was originally August 12, 2012, and has been extended to September 26, 2012, according to ICANN’s announcement at
Comments may be submitted online at  Previously submitted comments may be searched and viewed at  There is no cost or filing fee for submitting a Public Comment. 

A party submitting a Public Comment identifies the objection ground by selecting one of thirteen preset categories identified by ICANN.  Each category has a standard of review.  For example, Comments filed under “String Similarity” will be considered as part of the application’s evaluation by ICANN.  Comments filed under “Community” will be considered by ICANN, and by the dispute-resolution service provider if a formal Objection is also filed.  Public Comments designated in the “Other” category will not be part of any evaluation or objection process. 

Public Comments must be submitted by September 26, 2012, to be considered by the evaluation panels and/or dispute-resolution service providers.  Public Comments submitted after the deadline will not be considered by the evaluation panels or dispute-resolution service providers.

Formal Objection Period Ends in 2012
The Objection period opened on June 13, 2012, and according to ICANN’s website, “is intended to remain open for approximately seven months” (approximately January 13, 2013, although no formal deadline has been announced).

After the objection filing period closes, all objections received will move through the dispute-resolution process, estimated to take approximately five months, in the absence of extraordinary circumstances.  Accordingly, trademark owners should plan to file any Objections between now and December 2012 at the latest. 

Formal Objections may be filed under four grounds:  String Confusion, Legal Rights, Limited Public Interest, and/or Community.  Filing fees apply when submitting a formal Objection.  An overview of the formal Objections is located on ICANN’s website at

Phonetically Identical Domain Names May Be in the Future
Currently, domain names are available in Latin characters (e.g., CARS.COM), which are commonly referred to as ASCII domain names.  Domain names are also available in various foreign-language scripts, where the term to the left of the dot is represented in foreign-language characters and the gTLD is represented in Latin characters (e.g., .COM, which renders “cars” in Japanese).  Foreign-language script domain names are commonly referred to as internationalized, or IDN, domain names.

VeriSign SARL of Switzerland (“VeriSign”), affiliated with U.S. VeriSign Inc. and the registry operator for .COM and .NET, has applied to register twelve gTLDs that are foreign-language transliterations of .COM and .NET.  These gTLDs are phonetic equivalents of .COM and .NET that are written in a foreign-language script.  Specifically, VeriSign has applied for transliterations of .COM in Thai, Japanese, Hebrew, Arabic, Simplified Chinese, Traditional Chinese, Cyrillic, Hindi, and Korean.  VeriSign’s applications for transliterations of .NET are in Hindi, Simplified Chinese, and Korean.

VeriSign’s applications identify two “target” existing-registrant groups, but it does not appear from VeriSign’s applications that the new gTLDs are restricted solely to these two groups or to particular registrants.

The first “target” group is comprised of registrants of existing IDN domain names.  Accordingly and continuing with the above example, a registrant who now has .COM might be able to register the phonetically identical name . コム, which renders CARS.COM fully in Japanese.  Because VeriSign’s applications do not describe any restrictions for future registrants, it may also be possible for a third party to register a phonetically identical domain name.   

The second “target” group is comprised of owners of existing ASCII domain names.  Accordingly, a registrant who now has CARS.COM might be able to register ― or a third party may be able to do so.   

If VeriSign’s transliterated gTLDs are cleared by ICANN, it may be possible in the future that brand owners of existing .COM domain names will have to consider purchasing the phonetically equivalent variations in order to prevent such identical domain names from being registered by third parties.

As of June 29, 2012, there are three Public Comments posted by two individuals regarding VeriSign’s application for the Arabic transliteration of .COM.  Two Comments object on the basis of potential confusion, and one Comment asserts that no confusion is likely.