The Internet is expanding from 23 familiar "top level" (or after-the-"dot") domain names such as .COM, .ORG and .BIZ to an unlimited number of new domains. Through ICANN's new generic top level domain name (gTLD) initiative, there will be new "dot" brand names, generic words, geographic locations and industry identifiers, among other categories. Examples include .BRANDS (covering many of the world's top brands), .GAME, .CLOTHING, .EAT, .NEW, .NYC, .LONDON, .LLC, .PRODUCTIONS, .FITNESS, .MEDIA, .TECHNOLOGY, .SUCKS and .VODKA, among many others. New gTLDs that have passed inspection by ICANN have been deemed "Registry Operators" and are now accepting applications.
Squatters were generally turned off by the high barriers to entry during the first phase of the new gTLD program. But the increase in new domain name opportunities has ushered in a new phase where squatting and IP rights infringements are proliferating.
Registry Operators are accepting applications for domains that will exist within their "dot" space, called before-the-dot or "second level" domains (e.g., FRANKFURTKURNIT.ATTORNEY). You can now apply to own your .PHOTOGRAPHY, .GIVES or .BEER domain (or any of the other "dot" examples listed above). Unlike the first phase of gTLD applications, ICANN is not overseeing these applications. Registry Operators set their own criteria for second level domains and the most important factor is being first in line.
Impact on Businesses
The new domains will change how the Internet operates. One open question is whether the new gTLDs will change the way consumers interact with the Internet, domain names and brand names. Some argue that because so many high-profile and trusted brands applied for their .BRAND, the trust built up in .COM will shift and consumers will begin to look for .BRAND or YOUR BRAND.YOURINDUSTRY as a signal they are on the correct company website.
Steps to Take
Regardless of how consumers will interact with the new domains, securing potentially valuable new domains now - rather than negotiating with squatters in the secondary market - would seem to be the best approach. Additionally, the new domains may provide opportunities for companies that currently do not own their ideal domain. For either circumstance, there are options that brand owners can take advantage of to put themselves in the best position:
(1) The Trademark Clearing House. If you own a registered trademark in any jurisdiction, you can take advantage of the Trademark Clearing House ("TMCH"). TMCH registrants are permitted to participate in "sunrise" periods as new gTLDs roll out, which essentially gives TMCH registrants the first chance to secure their BRAND._____ domain before the general public.
(2) Blocking. Certain Registry Operators are offering blocking services where TMCH registrants can block exact matches to their trademarks from being registered across a wide array of new domain names.
(3) Defensive registrations. A proactive and relatively inexpensive method available to registered and unregistered trademark owners is to develop a strategy for implementing preemptive defensive registrations with potentially problematic domains (for example, .SUCKS, .WTF or .YOURINDUSTRY).
(4) URS and UDRP procedures. In addition to the traditional UDRP (Uniform Domain Name Dispute Resolution Procedure), the URS or Uniform Rapid Suspension procedure is now available as an enforcement mechanism against offending domain registrations. The URS is designed to be more cost effective and faster than a UDRP.
(5) Preparing for the next round of gTLD applications. ICANN publicly announced that there will be a second round of applications for "right-of-the-dot" domains. We expect the application fee to be significantly less than prior rounds. New companies are providing back-end services to help applicants meet the other requirements for gTLD ownership. The industry is also expecting more mid-level and smaller brands to apply for their .BRANDS in the second round. If you think you may be interested in owning your own .BRAND there are steps to take now to prepare.
(6) Objecting to pending gTLD applications. If a pending application impacts your rights, there are steps to take now to prevent that gTLD from coming into existence. For example, certain community groups objected to the formation of the .CATHOLIC and .INSURANCE domains, arguing no one entity could validly represent the diverse interests of those communities.
(7) PDDRP, RRDRP and PICDRP. ICANN also has various procedures and policies available in the event that a Registry Operator is systematically accepting infringing domains or otherwise operating counter to law.
This alert provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.
