February 5, 2023

Volume XIII, Number 36

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February 03, 2023

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February 02, 2023

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Update on ICANN’s (Internet Corporation for Assigned Names and Numbers) New Generic Top-Level Domain (gTLD) Program

Brand owners should prepare for Internet expansion in 2013.

Despite numerous concerns voiced by governments, law enforcement, brand owners, and businesses, the Internet Corporation for Assigned Names and Numbers (ICANN) continues to march forward with its new generic Top-Level Domain (gTLD) program, which promises to significantly expand the number of available Internet domain extensions in the near future.[1] ICANN is currently evaluating more than 1,900 applications for approximately 1,400 unique gTLD strings on a rolling basis. (For perspective, there are only 22 gTLD registries active today.)

Approximately 150 of these applications have passed ICANN's initial evaluation, and absent procedural and/or technical delays, these domain extensions should reach the marketplace sometime in late summer or fall 2013. Examples of gTLD strings that correspond with generic terms that will be available to the public, have been approved by ICANN, and appear to be on a fast track include .八卦 ("gossip" in simplified Chinese Han characters), .camera, and .menu. Applications for other generic terms (e.g., .app, .blog, .search, and .shop) that would not be available to the public are still being reviewed by ICANN and will be subject to additional scrutiny. The applicants for these "closed" extensions plan to use them within their organization and with certain permitted third parties.

Other applied-for gTLD strings may take longer to arrive for various reasons, including third-party objections filed on a number of different grounds, strings being placed into "contention" by ICANN because more than one party submitted an application for the same string, and ongoing government scrutiny.

To complicate matters further, on April 11, 2013, ICANN's Government Advisory Committee (GAC) issued a communiqué that may have sweeping implications for the new gTLD program.[2] The GAC has advised the ICANN Board that all new gTLDs should establish a mechanism for addressing cybersquatting and fraud at the registry level. The GAC also advised that strings linked to regulated and professional sectors, which are "likely to invoke a level of implied trust from consumers, and carry higher levels of risk associated with consumer harm," should have additional safeguards to protect consumers, including requiring registrants of domains in such strings to adopt appropriate security measures to protect the personal information of consumers.[3] The GAC had other specific recommendations as well.

The GAC's communiqué may delay ICANN's new gTLD program, as each applicant must now respond and state how it intends to address the GAC's concerns. ICANN has opened the GAC's communiqué to public comment until June 4, 2013.

Against this backdrop and given that the number of available gTLD extensions will almost certainly expand to some extent this year, brand owners should familiarize themselves with the options available to both protect and extend their marks in this new space. In particular, in most cases, brand owners should do the following:

  • Identify and record key word marks with ICANN's Trademark Clearinghouse, a centralized database of verified data on registered trademarks that will facilitate several rights protection mechanisms implemented by ICANN to protect trademarks in new gTLDs.[4]

  • Review the list of applied-for gTLD strings[5] and identify those strings that are important for both commercial and defensive reasons.

  • Consider what domains should be registered in each identified new gTLD string, including domains that correspond directly to your brands and domains that combine your brands with other terms.

  • Put watching services for domain name registrations in place, identify who will review watch notices, and coordinate with counsel regarding these reports.

[1]. For more information on ICANN's new gTLD program, view our June 13, 2012, LawFlash, "ICANN Publishes List of New gTLD Registry Applications," available here, and our September 9, 2011, LawFlash, "Decision Time: Trademarks and the New World of Domain Names," available here.

[2]. View the communiqué here.

[3]. This advice appears to apply to more than 500 applied-for gTLD strings that relate to, or otherwise identify, a broad range of subjects, including children, health and fitness, financial services, and intellectual property.

[4]. For more information on ICANN's Trademark Clearinghouse, view our February 6, 2013, LawFlash, "ICANN Publishes Pricing for Trademark Clearinghouse," available here.

[5]. View the list of applied-for new gTLD strings here.

Copyright © 2023 by Morgan, Lewis & Bockius LLP. All Rights Reserved.National Law Review, Volume III, Number 115

About this Author

Ron Dreben, intellectual property lawyer, Morgan Lewis

Ron N. Dreben advises clients on intellectual property and technology issues in business transactions. He provides advice in connection with mergers, acquisitions, and licensing arrangements, as well as trademark, copyright, trade secret, and related IP law. A Certified Information Privacy Professional (CIPP), Ron helps companies address privacy issues and respond to security breaches and advises US companies on the relevance of the EU Data Directive. Ron has experience negotiating with most of the leading technology product and service vendors.

Dana Gross, Patent lawyer, Morgan Lewis

Dana S. Gross works on all facets of international trademark portfolio management, including clearance, prosecution, protection, and enforcement. He also assists clients with issues pertaining to domain name portfolio management and online enforcement, filing and defending claims brought under the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy (UDRP), and the takedown procedures of the Digital Millennium Copyright Act (DMCA). Dana also advises clients on the intricacies of ICANN’s new generic top-level domain (...