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Review New ICANN gTLD Registrations Now to Protect Your Business

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Between January 12 and May 30, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) received more than 1,900 applications to register more than 1,400 generic top level domains (gTLDs). Companies, community organizations and individuals may file an objection to any of these new gTLDs, but the objection period will end in mid-January 2013. Businesses should carefully review the gTLD application list and consider filing an appeal to protect their rights and interests, if necessary.

There are currently over 200 million unique domain names on the Internet. This amazing variety subsists primarily in the second level of the domain name; there are only 22 gTLDs, and the overwhelming majority of sites are in only one gTLD: ".com." By analogy, this is like a population of 200 million people who all have the last name Smith, but unique first names. This is about to change, as ICANN recently began a registration process that will allow for the creation of thousands of new gTLDs over the coming years. Registration will proceed in waves, at 1,000 new gTLDs per year. The first application wave is now closed, and it is fair to say it was a land grab.

The new gTLDs do not come cheap. Applicants have paid a $185,000 filing fee per requested gTLD, and must pay a $25,000 annual fee for any gTLDs granted. Applicants who receive a new gTLD can be as inclusive or exclusive with it as they like. Some companies, like Apple, have applied for a gTLD consisting of their company name (e.g., ".apple"), and they will likely keep all second level domain names under that gTLD in-house (e.g. www.iphone.apple). Other entities have applied for broad gTLDs (e.g., ".space" or ".website"), with which they intend to create a registry business selling secondary domain names to the public, much as sites like GoDaddy currently sell secondary domain names under the .com or .net gTLDs.

On June 13, 2012, ICANN published a list of the 1,931 pending applications for new gTLDs, and opened a seven-month period during which interested parties can object to applications.

There are four grounds on which a party can file an objection to a gTLD application:

  1. String Confusion: The applied-for gTLD is confusingly similar to the opposer's existing gTLD or another gTLD applied for by the opposer. For example, the applicant for .music gTLD might object to the gTLD application for .musics.
  2. Legal Rights: The applied-for gTLD violates the objector's intellectual property rights. For example, Apple could object to a .ipod gTLD application filed by third party.)
  3. Limited Public Interest: The applied-for gTLD violates generally accepted international legal norms of morality and public order. Anyone can lodge this objection.
  4. Community: The applied-for gTLD is substantially opposed by a significant portion of the community it targets. Only an established institution within the targeted community can file this objection, such as a grocers' organization that may oppose the .grocers gTLD application.

The dispute resolution forums, processes and costs are very different for each of these types of objections. For example, String Confusion objections are heard by the International Centre for Dispute Resolution, while Legal Rights objections are heard by the World Intellectual Property Organization. Accordingly, it is advisable to seek legal help when considering filing an objection.

Action Points:

  • Review the list of gTLD applications here.
  • Pay special attention to gTLDs which may be the same as or similar to any of your trademarks.
  • Also pay special attention to gTLDs which appear directed at a business "community" of which you are a part, such as .bank, .healthcare, .medical, etc. Consider whether these gTLDs, if issued, could negatively affect your business interests, or, possibly, even be helpful to your business.

If you have questions about the new gTLDs, how they may affect your business or how to file an objection to a gTLD application, please contact your Baker Donelson attorney.

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