Companies should make an affirmative decision no later than year end as to whether they will file an application to register a generic top-level domain ("gTLD") under the expanded gTLD registration program of the International Corporation for Assigned Names and Numbers ("ICANN"). The new domain name system will accommodate the addition of company names, such as .ford, .ibm, .bankofamerica, or .yourcompanyname.
Deadline. The initial 90-day application period to register a gTLD begins on January 12, 2012 and ends on April 12, 2012. However, applications must be submitted electronically via ICANN's web-based TLD Application System ("TAS") by registered TAS users and the deadline for becoming a registered TAS user is March 29, 2012. Therefore, any potential applicants who have not met the March 29, 2012 deadline will be barred from submitting a gTLD application. ICANN has not announced when or if a second application period will occur.
Costs. The application evaluation fee will be approximately $185,000 payable in two phases: a $5,000.00 deposit fee is due upon the submission of the TAS user registration, and $180,000 is due upon submission of the gTLD application. Applicants also should expect to incur costs for legal support and for setting up and testing the registry. Once registered, the annual costs to maintain the gTLD domain name registration and the associated registry are estimated to be in the range of $100,000 to $200,000.
Evaluation Period. According to the ICANN gTLD Applicant Guidebook, following April 12, 2012, ICANN will publicly post on the ICANN web site those portions of the gTLD applications that have satisfied the initial evaluation criteria. At that point, members of the public will have an opportunity to file formal objections to any such applications, using ICANN's dispute resolution procedures. The objection filing period will end approximately two weeks after the evaluation results have been posted. ICANN anticipates the evaluation process for each application will take between 9 and 20 months.
Trademark Clearinghouse. ICANN's gTLD program will also create a Trademark Clearinghouse ("TMCH"). According to ICANN:
The primary purpose of the TMCH is to function as an information repository, offering authentication and validation services for trademark data. Trademark holders and gTLD registry operators will rely on the TMCH to support rights protection mechanisms for the new gTLD space. The TMCH is designed to be available globally, with capabilities for validating trademark data in multiple scripts and responding to inquiries in multiple languages.
http://www.icann.org/en/announcements/announcement-5-03oct11-en.htm According to ICANN, the TMCH is designed to allow mark owners to register their trademark information with a single centralized database, rather than requiring mark owners to deal individually with each new gTLD registry operator. Second, whenever an individual gTLD registry operator receives an application for a gTLD containing a mark registered with the TMCH, both the applicant and the mark owner will receive notification of the potential infringement. Third, the TMCH will supplement ICANN's Uniform Rapid Suspension System ("URS") in order to provide an expedited procedure for addressing blatant instances of trademark infringement. Finally, while ICANN has yet to determine how much it will charge mark owners to register their marks with the TMCH, ICANN recognizes that the cost should be "reasonable." The details of the TMCH implementation are still evolving.
As the January 12, 2012 commencement date approaches, the gTLD program is becoming a more popular topic on Capitol Hill. On December 7, 2011, the Federal Trade Commission Chairman expressed deep concern about the program to a House subcommittee; on December 8, 2011, the Senate Commerce Committee held a hearing concerning the implications of the gTLD program; and the House Commerce Committee announced it will hold a hearing on December 14, 2011 concerning the program.
It appears that the application period for the gTLD program will commence as scheduled, notwithstanding the activity on Capitol Hill. If your company has not already evaluated and affirmatively decided whether or not it will make an application for a gTLD, it should do so by year end to provide sufficient time to deal with the multidisciplinary issues that are necessarily involved (e.g., marketing, information systems, legal, financial, risk management). Additionally, your company will want to explore what additional measures, if any, should be implemented to monitor effectively unauthorized trademark uses in order to combat infringement of and cybersquatting on the company's marks.