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Preparing for the Launch of New Generic Top Level Domain Names (gTLDs) in 2011

On June 16, 2008 the Internet Corporation for Assigned Names and Numbers 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 of gTDLs (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.

Although 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 2011.  However, it is likely that the start of the application process will be delayed further, as various trademark organizations have raised concerns about the award and dispute resolution process. 

Why Expanding The Number of gTLDs is a Good Idea

ICANN has stated that its aim 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 for  them to register brand names as gTLDs, they  will also 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 (used 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.

And Why it Might Not Be

On the down side, 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 inevitably 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.

Cost to Apply for a New gTL

As alluded-to above, the cost to apply for one of these new gTLDs is steep -- $185,000, a price that ensures only well-financed organizations operate the domains, and involves a lengthy application process and evaluation. 

Will Someone Else be Able to Register My Trademark as a gTLD?

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, 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. 

For More Information . ..

General information about ICANN can be found at its website.  A discussion from ICANN regarding the new gTLD program (the dates on this document are no longer correct, because of delays) can be found here. Parties interested in providing input or voicing concerns regarding the plan or the process can attend the next ICANN meeting, scheduled to take place in San Francisco, March 13 - 18, 2011.

.Monica Talley Speaks on the ICANN domain name expansion in this video below:

© 2020 Sterne KesslerNational Law Review, Volume I, Number 76

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About this Author

Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy...

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