Update - New gTLDs
What's that distant sound you hear? It's the sound of a
swarm coming your way. In less than a year, the Internet
Corporation for Assigned Names and Numbers ("ICANN")
plans to begin accepting applications for a "swarm" of
new top level domain names and granting them by the hundreds. This
move will likely usher in a new world on the web. Web 3.0 is fast
approaching and brand owners should beware – it is not
designed with you in mind.
What's Happening
In late June, at its 32nd International Public Meeting, ICANN
accepted recommendations on a plan to expand the world's Domain
Name System by introducing an indefinite number of new generic
top-level domain names ("gTLDs"). Currently 21 gTLDs
exist including .com, .net, .org, .info, .biz, .coop, and others.
ICANN claims that it hopes to foster diversity, innovation,
competition and new business opportunities in the domain name space
by allowing applicants to self-select domain strings and operate as
their own registries. ICANN's plan will permit new gTLD owners
to open their domain space for sale to third parties through
registrars, or to secure a domain for their exclusive use.
Timeline & Procedure
Late in the evening on October 23, 2008, a request for proposal
("RFP") also called the Draft Applicant Guidebook, was
published for public review and comment on ICANN's website.
Along with a set of accompanying explanatory memoranda, the RFP
provides detailed information on the proposed application process,
outlining the applicant and string criteria requirements as well as
the anticipated evaluation fees. The public comment period opened
on October 24, 2008 and will last for 45 days, closing on December
8, 2008.
Although a number of details are still undecided, ICANN intends to
implement an open application approach by inviting any public or
private established entity from anywhere in the world to submit an
application during a limited application period (currently
projected to be in second quarter 2009). Initially, applications
for new gTLDs will be assessed in rounds until ICANN is able to
determine the demand for the new "Internet real estate."
Once the first round of applications have been evaluated for
completeness and the application period has closed, ICANN will
publish a list of the applications on its website. ICANN will also
update the status information for each application posted as
further developments occur in the evaluation process.
An "objection-based" mechanism will be available to
provide trademark owners with an opportunity to protect their marks
from applicants attempting to become registries for identical or
confusingly-similar gTLDs. As for objecting to the registration of
second level domain names (i.e. the "dorsey" in
dorsey.com) in the new gTLDs once they have been launched, the
standard UDRP (Uniform Dispute Resolution Policy) objection process
will apply.
The new gTLD implementation plan is in development and must be
approved by the ICANN Board before the new gTLD program is
launched. A draft of the application is expected to be available
for public comment on ICANN's website in early November. ICANN
hopes to release the final Applicant Guidebook in the first quarter
of 2009 and begin the first application round in the second quarter
of 2009. Trademark owners will likely want to stay informed as new
developments, dates, and procedures are announced. Meeting with
intellectual property counsel early and monitoring new gTLD
applications for infringement will be imperative for owners who
wish to protect existing brands.
Some Opportunities
So what's in it for you? ICANN's new gTLD program provides
brand owners with an opportunity to create a global presence and
control their "own island" on the Internet. For instance,
in theory, Dorsey & Whitney LLP could operate a registry for
the gTLD .dorsey or .dw and own all domain names in the registry.
New gLTD registries could restrict registration in accordance with
their own business models or enhance their brand by creating online
communities for their customers, partners, subsidiaries, licensees,
etc. Trademark owners who operate their own gTLDs will also be able
to reduce their exposure to infringement by cybersquatters in their
gTLD.
Big Challenges and Strategy Adjustments Ahead
So what's it gonna cost you? The cost of developing and
implementing the new gTLD policy is intended to be borne entirely
by the applicants. Currently, the evaluation fee for a single gTLD
in the first application round is estimated at $185,000. Domainers
have already begun filing trademark applications to protect likely
gTLDs and potentially to help in the application process.
Applications for new gTLDs will be processed on a first-come,
first-served basis, meaning if you do not monitor third-party
applications or apply to register your gTLD in one of the early
rounds, you may lose the chance in later rounds, if an identical or
confusingly-similar gTLD has already been taken.
While it will be possible for individuals to set up a registry
using someone else's brand, given the exorbitant application
costs anticipated, this risk seems much less significant than the
enormous enforcement cost of policing domain names or making
defensive registrations in 50-1000 new gTLDs.
Trademark owners should start making plans to protect their brands
in this new domain name regime. Questions to consider include:
Should we change our strategy in regard to defensive registrations?
What types of rights protection mechanisms should we use - will a
sunrise period challenge or an IP claims service provide the best
way to safeguard our brand? Should we change our enforcement
strategy?
A New Way of Thinking About the Web
The planned proliferation of gTLDs will impact Internet users,
businesses, brand owners, and IP practitioners alike. Predictions
of the long-term impact are difficult, but it seems clear the
"swarm" of new domain names will ultimately create such
chaos that, Internet users increasingly will rely on Internet
search engines to find the information or products they are
seeking. With an increased reliance on search engines, keyword
advertising strategies and search engine rankings will be of
paramount importance.
Those interested in applying for and running new gTLDs who do not
have the technical capacity to operate a registry should begin
identifying potential back-end registry service providers as soon
as possible. Many of these companies are or will be entering into
agreements with applicants for new gTLDs that will likely preclude
them from working with other applicants. Given the limited number
of registry operators, and their limited capacity, it is important
to request assistance or begin negotiations early.
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.
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