A generic top-level domain (“gTLD”) refers to the letters that follow the final "dot" in an Internet domain name, such as “.com,” “.net,” etc. The organization that oversees the Internet’s address system, ICANN, is planning to make it possible for almost any term to become a gTLD, including trademarks, and the names of products, services, industries and geographic places.

ICANN recently published a Draft Applicant Guidebook regarding the new gTLDs (see http://www.icann.org/en/topics/new-gtld-program/htm). Note that these Guidelines are presently under review and comment, so the final enactment may differ from the present draft. The comment period has recently been extended to December 15, 2008.

Under the draft Guidelines, an owner of a new gTLD must be a legal entity, not an individual. That owner will be able to set its own standards for who can register a domain name containing that gTLD, such as only its licensees or members.

Obtaining a new gTLD will be very costly, starting with a non-refundable application fee of $185,000. If there is a challenge or other proceeding, additional ICANN fees may exceed $125,000, not including the costs of potential arbitrations or litigation. Applicants must also have the technical, financial, and operational capability to run a top-level domain registry, although it is possible to sub-contract those functions. In the event of equally qualified applications, ICANN will be entitled to auction off the gTLD to the highest bidder. Some commentators have estimated that the cost of a full implementation could exceed $1,000,000. In addition, there will be annual renewal fees, which will be a minimum of $75,000, additional fees depending on the number of registrations, plus the cost of actually operating the new gTLD registry.

The new gTLDs may present a marketing opportunity for large companies who choose to establish their company name or house mark as a gTLD and use that new gTLD with product marks to reinforce their corporate branding efforts (e.g., , etc.).

As with the present gTLDs, there will be a procedure for a trademark owner to challenge a new gTLD that incorporates its mark(s), but ICANN does not plan to require proof of trademark rights in the new gTLDs, as was required in the “Sunrise Period” for “.info,” and is now being done with the new “.tel” gTLD (see below). Trademark owners may wish to submit comments to ICANN seeking to modify this provision. As discussed above, comments can be submitted until December 15, 2008.

Given the extreme cost, rather than seeking to obtain a new gTLD for their marks, many companies may wish instead to monitor new gTLD applications, so that a timely objection can be filed if needed. If a new gTLD is not sought, we strongly recommend that our clients institute a domain name watch service for their key marks so that they can effectively monitor new gTLDs. We also recommend that our clients consider monitoring and cooperating with trade and regional associations to register gTLDs that are important in their industries, such as the generic names of products, services, industries and geographic places.

The first new gTLD applications are not expected to be submitted until mid-2009, probably later; and the first new gTLDs are not expected to be operational until at least the fall of 2010. Once the Guidelines have been finalized, we can contact you with additional information. If you are interested, please contact your trademark attorney at Townsend.

“Sunrise Period” Now Open for New “.TEL” Top-Level Domain

.TEL is a new top level domain approved by ICANN that was launched on December 3, 2008. During the “Sunrise Period” that will last until February 2, 2009, it will be available only to trademark owners and their licensees. "Landrush" and "General Availability" Periods will follow later in 2009.

The .TEL domain will enable its owners to store, update and publish contact information, Web links and keywords, with different levels of access for different types of users, without the need of a typical website. A user will instead be able to contact someone in the owner’s organization directly by clicking on one of the contact details provided on the .TEL site. Further information is available at www.telnic.org, the web site for the .TEL sponsor, Telnic Limited.

Sunrise Period (December 3, 2008 to February 2, 2009)

During the “Sunrise Period,” only owners or licensees of registered marks that were filed in the U.S. Trademark Office (or comparable foreign agency) prior to May 30, 2008 will be able to register a .TEL domain name, and only if the name and owner exactly match the registered mark. The typical cost of registration for the .TEL domain name during the Sunrise Period is $399.00 for a three-year period and with a cost of $19.99 per year thereafter. The selection method is first-come, first-served, so interested eligible registrants are encouraged to file applications as soon as possible.

Landrush Period (February 3, 2009 to March 23, 2009)

During the “Landrush Period,” any .TEL domain that is not registered during the Sunrise Period will be eligible for registration by the general public on a first-come, first served basis. The initial fee will then be $375.00 for a mandatory three-year minimum term, with a subsequent fee of $19.99 per year.

General Availability (after March 24, 2009)

After March 24, 2009, registration of .TEL domains will be open to everyone on a first-come, first served basis for an annual fee of $19.99.