What are the New gTLDs?
The landscape of the current Internet offers 21 generic top-level domains (gTLDs), such as .com, .net, .org, and others, through which domain names are registered and by which users navigate to websites. However, for the past several years the Internet Corporation for Assigned Names & Numbers (“ICANN”) has been developing its plan to offer new gTLDs, which will allow communities and organizations to register gTLDs of their own choosing. These gTLDs, which may take the form of, for example, .fashion or .brandname, will grant registrants the opportunity to personalize and distinguish their Internet presence. However, with the registration of several hundred or more new gTLDs a possibility, brand owners will face new challenges with respect to protecting their trademarks on the Internet.
This update will: (1) discuss issues to consider when deciding whether to apply for a new gTLD; (2) outline the current version of the Applicant Guidebook, noting specific changes that are relevant to brand owners from prior versions; and (3) provide guidance for organizations on adopting an appropriate strategy for addressing new gTLDs.
How Do I Decide Whether to Apply for a New gTLD?
Before the application period opens, organizations will need to decide whether to apply for a new gTLD. One significant consideration is the organization’s budget. ICANN’s application fee alone for a new gTLD is $185,000. In addition, over the life of the ten-year registry agreement required to operate a new gTLD, an organization may incur additional costs of up to several times that amount, especially when considering technical infrastructure costs, legal fees, and ongoing registry services. Thus, determining whether to apply for a new gTLD is likely a top-level decision that will require input from an organization’s legal, marketing, and executive teams. Some questions to ask include:
- What are our core brands, and which brands are most vulnerable to infringement, especially on the Internet?
- How would a new gTLD complement or replace our existing Internet presence?
- What is the likelihood that another party will register our desired gTLD extension if we do not apply?
- Are we committed enough to one particular brand or name to make the ten-year term of a new gTLD worthwhile?
- Do we have the resources in place to support the required technical infrastructure, or do we have the financial resources necessary to obtain outside assistance with technical services?
Once an organization has decided to apply for a new gTLD, the organization should obtain trademark clearance to reduce the possibility that another party will object to the application on legal grounds, which might result in loss of the application fee as well as loss of the opportunity to register a new gTLD during this application period.
The Proposed Final Applicant Guidebook
On October 28, 2010, ICANN released a new timeline indicating that the application process for new gTLDs is scheduled to launch in May 2011, thus increasing the urgency with which brand owners must determine (a) whether to take advantage of the opportunities presented by this new space to build their own Internet presence; and (b) how to adapt their domain name and Internet enforcement programs to account for a potentially dramatic increase in infringement.
In addition, on November 12, 2010, ICANN published a new Proposed Final Applicant Guidebook (AGB), available at http://www.icann.org/en/topics/new-gtlds/draft-rfp-clean-12nov10-en.pdf, outlining the proposed procedures for applying for a new gTLD. The AGB, the fifth in a series of draft Guidebooks, should be of great interest to brand owners who are interested in learning more not only about the new gTLD process, but about trademark protection mechanisms that the new gTLD program is proposing to put in place. Brand owners should also note that, according to ICANN’s timeline, this is the last version of the AGB that will be published in draft form; thus, those who are concerned about the trademark protection provisions, or any other proposed elements of the process, should consider submitting comments to ICANN by the deadline on December 10, 2010.
The updated AGB includes some significant updates that are relevant to brand owners, including changes to the Trademark Clearinghouse and the Uniform Rapid Suspension System (URS).
The Trademark Clearinghouse is a repository to which legal rightsholders, usually owners of registered trademarks, may submit their marks, the primary purpose of which may be to facilitate participation in sunrise programs. In order to be accepted into the Trademark Clearinghouse, marks now must have undergone substantive review. This change may affect new gTLD planning for brand owners who hold registrations in jurisdictions that do not require substantive review.
The URS is an alternative to the UDRP that allows infringing second-level domains to be disabled (but not transferred to the rightsholder, as granted under the UDRP). ICANN has shortened the response period to 14 days for Registrants against whom a URS Complaint was filed.
How Do I Craft a Strategy for Addressing New gTLDs?
Organizations should keep in mind that, even if they do not wish to apply for a new gTLD, their domain name strategies will still need to adapt to the evolving space. We can assist with developing efficient strategies and programs to suit your business needs in a cost-effective manner. For example, we can help with:
- Conducting customized in-house training for your legal, marketing, and business teams, describing the new gTLD process and options most relevant to your industry and business;
- Monitoring the list of new gTLD applications, which will be posted by ICANN, and preparing comments to ICANN on applications of concern;
- Filing legal rights objections to applications of the greatest concern;
- Participating in the Trademark Clearinghouse and select sunrise programs; and
- Conducting enforcement against infringing second-level domains that are registered in the new gTLDs.