ICANN Expands Internet Generic Top-Level Domain Names

24 June 2011 Publication
Author(s): Andrew Baum

Legal News Alert: Trademark, Copyright & Advertising

On June 20, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a plan to expand the number of Internet address endings, known as generic top-level domain names (gTLDs). Currently, the Internet is structured around 22 gTLDs, such as the familiar .com, .edu, .net, .org, and others. The approved plan is one of the most significant changes to the Internet domain naming system and will result in an unprecedented expansion of options available to secure Internet domain name addresses. It will now be possible for a public or private organization to register virtually any term, in any language, as a gTLD. It is likely we will see the emergence of gTLDs utilizing generic terms (e.g., .bank, .food), brand names, (e.g., .foley), and geographic locations (e.g., .nyc, .tokyo).

ICANN will accept applications for new gTLDs from January 12, 2012 through April 12, 2012. All applications filed during this period will be considered equal in terms of priority, so there will be no “gold rush” on January 12. New gTLDs awarded under this program will likely be launched in 2013. The new gTLD application process is lengthy and complex. To register a gTLD, a company must file an application with ICANN along with the $185,000 application fee. If the application proceeds through the ICANN evaluation and clearance stages, a company will enter into a registry agreement with ICANN to become a registry operator for an initial period of 10 years. To launch and maintain the gTLD, the owner will be required to pay additional fees, including start-up costs, annual maintenance costs of at least $75,000, and other expenses that are expected to exceed $500,000 during the first 18 – 24 months.

The rollout of new Internet domain name addresses will provide companies with opportunities to acquire their own gTLDs to maximize their online market presence. Brand owners should develop a gTLD strategy that not only enhances their online global presence but also secures the protection of their brands from online infringement.

The first consideration is whether a company should apply to register a gTLD. Given the cost of owning and operating a gTLD, a company may wish to conduct a feasibility study to determine whether securing a gTLD will help increase visibility of its brand, control the image and reputation of the brand, enhance brand trust, or allow consumers to easily access information related to the products or services associated with the brand.

Trademark owners should recognize that with a potentially limitless number of gTLDs entering cyberspace, there are increased opportunities for infringement and counterfeiting. A company must adopt a novel, proactive, and vigilant protection and enforcement strategy to police its brand online. Mark owners should first protect their brands from being registered as gTLDs by others. This can be done by reviewing the published list of all gTLD applications that will be posted on ICANN’s Web site after the application period closes. Third parties will have a fixed period of time to review the published list, which will include the list of strings, applicant names, and other application data, to assess whether to file a formal objection using pre-established dispute resolution procedures (DRP). It is during this window of time that a trademark holder may lodge a “legal rights objection,” asserting that the gTLD string infringes an existing legal right of the objector, e.g., infringes a registered trademark.

When the option is available, mark owners also should register their marks in the Trademark Clearinghouse, a “central repository for information to be authenticated, stored and disseminated pertaining to the rights of trademark holders.” The Trademark Clearinghouse Database will report when an entity attempts to register a domain name that is considered an “identical match” with a mark in the Trademark Clearinghouse. Under this system, the Trademark Clearinghouse operators have the responsibility to notify a registered trademark holder if a third party attempts to register a domain name identical to its registered trademark.

Finally, companies should make prompt and effective use of the Uniform Domain Name Dispute Resolution Policy (UDRP), a remedy already used by brand owners to address infringing domain names. Although not finalized, it is expected that the new dispute resolution process will include a fast-track remedy, known as the Uniform Rapid Suspension System, designed to allow trademark owners file a complaint to disable (“take-down”) infringing Web sites.

Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and colleagues. If you have any questions about this alert or would like to discuss the topic further, please contact your Foley attorney or the following:

Toni Hickey
Washington, D.C.

Andrew Baum
New York, New York