Since the dawn of the internet, web addresses have ended with a few familiar letter combinations, such as .com, .gov and .org. These endings are known as generic top-level domains (gTLDs). While the possibilities for second-level domains—the information before the final dot—have been virtually unlimited, only 22 gTLDs exist on the internet today. All that is about to change.
On June 20, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a program to massively expand the number of available gTLDs. Between January 12, 2012, and April 12, 2012, eligible entities can apply to have almost any word, phrase or combination of characters made into a gTLD. Would-be gTLD registry owners must fill out a lengthy application and pay a hefty evaluation fee of $185,000. Despite the hurdles, ICANN expects this development to open a whole new era of internet use, with the possibility of unlimited gTLDs spawning competition and creativity in areas yet unimagined. Expect to see many companies applying for these gTLDs using their well-known brands; .Coke, .IBM and .McDonalds are likely to be on the gTLD horizon.
Why Should My Company Apply?
Securing a gTLD associated with your company is the ultimate in brand management. The owner of the gTLD has complete control and can assign or sell as many or as few associated web addresses as it wants. No longer will potential clients and customers have to wonder whether a website that uses your name or offers similar products and services is actually associated with your company. Only websites that you vet and approve can use your gTLD.
Securing a gTLD can also be a business unto itself. While companies with trademarks may wish to make those trademarks into gTLDs, new companies could form for the sole purpose of selling web addresses with desirable gTLDs—imagine .lawyer or .fashion or .money.
How Much Will It Cost?
The application fee is expected to be US$185,000 for a basic application. An initial US$5,000 deposit per requested application must be paid upon filing. The rest of the evaluation fee will be charged as the application proceeds through the evaluation process. There may be additional fees if the application requires specialized review and these fees could be many thousands of dollars.
In addition to filing fees, there will be business start-up costs associated with starting a Registry under a new gTLD. Registering a new gTLD means that your company will be a Registry, responsible for putting new domain names (e.g., your.newgTLD) in the right databases so that the new domain name can be located on the Internet. Therefore, technical internet expertise with its associated costs should be anticipated if your company applies for its own gTLD. ICANN will evaluate your company's ability to support a Registry during the evaluation process.
What Is the Process?
The application process consists of up to six stages: Administrative Check, Initial Evaluation, Extended Evaluation, Dispute Resolution, String Contentions and Transition to Delegation.
Administrative Check: Once the application period closes, ICANN will check applications to be sure all mandatory questions have been answered, required supporting documents included and fees paid. ICANN will post the public portions of all complete applications. (Approximately two months.)
Initial Evaluation: During this stage, ICANN will review the applied-for gTLD string to ensure it will not cause confusion with another gTLD or create internet stability or security problems. ICANN will also evaluate the applicant entity's financial, technical and operational abilities. During this time, third parties can file formal objections to applied-for gTLDs. (Approximately five months.)
Extended Evaluation: Entities failing the Initial Evaluation may request an Extended Evaluation. This stage allows for additional exchange of information between the applicant and ICANN but does not introduce any new evaluation criteria. (Approximately five months.)
Dispute Resolution: If third parties have submitted formal objections, those disputes will be resolved through independent dispute resolution service providers. An applicant must prevail against all legitimate objectors in order to proceed to the next stage. (Approximately five months, to run concurrently with Extended Evaluation.)
String Contentions: If two or more entities apply for the same gTLD or confusingly similar gTLDs and the entities are unable to settle the dispute among themselves, the dispute will be resolved through an auction or other applicable procedure. (Approximately 2.5-6 months.)
Transition to Delegation: During this final stage, applicants enter into a formal registry agreement with ICANN and complete various technical tests. (Approximately two months.)
In the best-case scenario—where no one objects and the proposed gTLD does not raise any special concerns—an application could pass directly from the Initial Evaluation to the Pre-Delegation stage. ICANN estimates that an application following this path would take about nine months.
Does My Company Qualify?
Any corporation, organization or institution in good standing is eligible to apply. Individuals, sole proprietorships and yet-to-be-formed entities are not eligible. ICANN will evaluate whether your entity has the technical, operational and financial capacity to operate a successful domain name registry.
ICANN will also screen applicant entities and their officers, directors, partners and major shareholders for past cybersquatting behavior and criminal history. Absent exceptional circumstances, an entity that has committed, or that includes an individual who has committed, a crime on ICANN's enumerated list within the last ten years will be disqualified. According to ICANN, the listed crimes track the "crimes of trust" standard sometimes used in the banking and finance industries.
Can I Reserve My Trademark?
ICANN will not accept advanced reservations of trademarks. Trademark holders must apply during the application window. An entity need not have a trademark to apply for a gTLD, although the trademark holder can object if someone else tries to register its trademark. And trademark holders may not jump the gun by applying now with intentions to use the gTLD sometime in the future. Successful applicants will be expected to use the gTLD immediately. Those with no immediate plan to use a gTLD should wait for a future application window, although it is not clear how long that wait will be.
Can I Prevent Others from Using My Brand As a gTLD?
If you choose not to file for a gTLD that incorporates your company's mark or name, but want to be sure no one else registers an infringing gTLD that contains your mark or a confusingly similar term, you will be able to file a formal objection to the registration of the infringing gTLD which will then be prosecuted in a fashion similar to other disputes involving trademark and domain name registration. As you can surmise from the rich history of cases involving cybersquatters, typosquatters and plain old domain name infringers, your company should be diligent about monitoring applications for new gTLDs.
For those with the means and the vision to be on the cutting edge of the next big internet innovation, January 12 will be here before you know it. Though all the rules concerning how the new gTLDs will be registered or disputed have not yet been finalized, it is surely worthwhile to stay informed of this new gTLD procedure and to be prepared from both an offensive and defensive position, should you wish to capitalize on or protect your company's trademarks, service marks or business name.
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.
