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ICANN to Begin Accepting Applications for New Generic Top Level Domain Names (gTLDs) in 2011


Written by Monica Talley
Attorney - Sterne, Kessler, Goldstein & Fox
Posted: February 18, 2011 @ 2:29 pm

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In June 2008 ICANN (the Internet Corporation for Assigned Names and Numbers), a non-profit technical coordination body for the Internet’s name and numbering systems, made headlines when it announced that it would allow an unlimited number of new gTLDs (generic top level domain names) to populate the web.  Expanding on the current limited offerings such as .com, .net, .org., .info, and .mobi, these new gTLDs will be comprised of virtually any possible term — including brand names (“.BRAND”), generic names (e.g., .CAR, .HOME), and city names — opening-up the web to an infinite number of naming possibilities.

While the process has been delayed several times, the current belief is that ICANN will begin accepting applications for these new gTLDs by July or August of 2011.  However, many in the industry expect the start of the application process to be delayed further, as various trademark organizations have raised concerns about the award and dispute resolution process.

ICANN’s stated goal in creating more gTLDs is to enhance competition and promote choice and innovation.  Of particular note to companies, not only will it now be possible to register brand names as gTLDs, but companies will have control of second level domain names issued under potential new gTLDs, and can sell these second level domain names to third parties.  Thus, this new system could allow not only for enhanced brand promotion and visibility, but also for secure corporate and client networks (for purposes such as facilitating the provision of services to clients via a dedicated portal) – which could prevent fraudulent practices such as offers of counterfeit products via the Internet.

That said, increasing the number of top level domain names means more opportunities for cybersquatters, those who register, traffic in, or use domain names with bad faith intent to profit from the goodwill of a trademark belonging to someone else.  It will also significantly increase defensive registration and dispute costs.  Many in the trademark community are concerned that this dramatic increase in the number of gTLDs will cause a considerable burden on trademark owners who will need to carefully consider online strategies.  In particular, not every country makes use of the Uniform Dispute Resolution Policy (UDRP), making it difficult to address abuses that originate abroad.  Moreover, while the variation of domain name dispute mechanisms available worldwide is considered complex today, in a world with only a handful of gTLDs, it will only get more complex as the domain name platform increases exponentially.  Finally, the high cost of obtaining one of these new domains is thought to exclude many worthwhile non-profit organizations and developing countries, for whom such domains might prove a useful resource.

The cost to apply for one of these new gTLDs is significant.  The initial application fee is $185,000, and additional fees apply should an applicant require an “extended” evaluation, or should an entity object to the application.  Proponents argue that the hefty price tag ensures only well-financed organizations operate the domains.  Opponents note that it also serves to keep-out worthy non-profits, or even poorer countries.

With respect to third-party challenges, after the application period closes, ICANN will verify all of the applications for completeness and will then release on its website the list of strings, applicant names, and other application data.  ICANN plans to then implement an objection-based process that will enable trademark owners to demonstrate that a proposed gTLD would infringe their legal rights. In the event that the legal rights objection is successful, the application will not proceed.

At this time, however, ICANN is not contemplating a system that would notify a trademark owner if a third-party applies to register a trademark that does not belong to them.  ICANN is conducting global public outreach to educate the community on what their responsibilities are, as well as what the formal objection mechanism and timeline is, before the program launches.  ICANN will publish the list of all applications received after the application submission period closes, and will continue to publicize the objection process and deadlines.

General information about ICANN can be found at its website, www.icann.org.  A discussion from ICANN regarding the new gTLD program (the dates on this document are no longer correct, because of delays) can be found at http://www.icann.org/en/topics/new-gtlds/factsheet-new-gtld-program-oct09-en.pdf.

Parties interested in providing input or voicing concerns regarding the plan or the process can also attend the next ICANN meeting, scheduled to take place in San Francisco, March 13 – 18, 2011 (http://svsf40.icann.org/sched-overview).

About the Author

Monica Talley is a director at intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox, P.L.L.C.. She has over 15 years experience protecting some of the world's most recognizable brands. Ms. Talley has been involved with every aspect of trademark, service mark, trade name, unfair competition, false advertising, and trade dress litigation. She specializes in trademark portfolio analysis and management, counseling, clearance, and prosecution. She works with clients to establish corporate intellectual property programs, and conducts domestic and international due diligence investigations and analysis.

3 comments
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  1. Thanks for the excellent article, Monica.

    Once all the smoke has been blown away and the mirrors broken, it becomes pretty clear that the biggest winner–by far–from all these junk tlds is ICANN itself through all these overpriced “application” and other fees and costs.

    And just watch the lawsuits fly as those “losing” entities try to stop the “winners” from being “awarded” the most highly desired extensions like .eco and .music that their didn’t get.

    Fact is, there are no legitimate reasons for 100′s of new tlds. It’s akin to trying to launch 100′s of new languages. There is no need for them.

    Monica–I could be wrong on this, but I believe that all countries, city-states, and the like have already been awarded their own tlds; at no cost to the countries. Which would continue to be the case with any new countries; so they would not in fact be subject to this “new tld” fee.

    One thing all these new extension will do, however, is further cement the value of .com; and to a lesser extent country-code tlds like .ca, .de, and .jp.

  2. The issues of trademark, censorship, libel etc have long been entrenched in the 200+ million domain names already registered. Should these issues, first and foremost the remit of law courts, be reason to limit address expansion?

    Sites like Dashworlds.com already provide free domains in the format http://business-com and http://commercial-law and http://paris-fashion (examples only). Totally outside the realm and control of ICANN, users can create any domain or any TLD in any language.

    This latest increase in domain names and TLDs is NOT the problem. As with so many things these days, the problem rests with a determined minority of users.

    http://ipwatchdog.com/2011/02/18/icann-new-generic-top-level-domain-names-gtlds-in-2011/id=15371/
    By it’s nature, the Law always find itself one or two steps behind innovation (ie: no 70 MPH speed limit or drink drive enforcement team necessary when riding chariot through Roman Forum in 44 BC). Ultimately IP law must catch up and make resolution of the issues you care about a much simpler and cheaper process.

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