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).