On June 13, ICANN announced the list of applicants for 1,930 proposed new top level domains. For the uninitiated, top level domains, or “TLDs” are the portion of the domain that appears to the right of the dot. Since the web’s beginning as a commercial venture, most of us have been accustomed to .com, .biz, .info, etc., and the cc (country code) TLDS such as .US, .UK etc. There are approximately 280 TLDs existing today (excluding internationalized TLDs and a few other “test” TLDs on ICANN’s radar).
For several years, ICANN, with the advice and comment of various constituency groups, has worked toward a system of identifying new TLDs in order to expand the top level domain name space, and (according to ICANN) encourage and enhance competition. Late last year, ICANN began receiving applications from those interested in being registrars for new, proposed TLDs. The list of applicants and their proposed offerings includes “.sucks” “.amazon,” “.science,” and “.like.” among others. If all of these TLDs ultimately come into being, it would expand the top level domain name space 8 times.
Media attention to the prospect of so many new domains has been somewhat schizophrenic, with some applauding the new direction ICANN has proposed, and others criticizing the vast and apparently overnight expansion as potentially giving way to chaos — particularly for IP and trademark rights holders who have legitimate concern that their enforcement budgets will now have to increase eightfold in order to match the new glut of opportunity for squatters, infringers and counterfeiters. To my reading, the best response has been Letterman- Style Top Ten Domains Not Applied For published by Forbes..
Kidding aside, it is important to recognize that these new TLDs will provide new territory for squatters, counterfeiters and miscreants to create confusion and worse on the internet. Equally, however, it is important to remember that these new proposed TLDs are just that – proposed. To be approved, not only will the TLDs have to survive challenges and comments from third parties, but each owner must be able to provide ICANN with evidence of its ability to act as a domain name registrar. To be sure, these thresholds may not keep concerns at bay — but they are important markers to bear in mind before rights holders and netizens panic at the oncoming wave of web expansion.
What should ecommerce businesses and IP rights holders be doing now in order to prepare for the “brave new world” of web expansion? Here are some ideas.
- Read the list of proposed TLDs. If any of the proposed names strike you as threatening to your brands or other commercial endeavors, be in touch with counsel who can help you decide whether your concerns can be aired through comment or complaint at ICANN. Be aware, however, that for the most part, complaints about the TLDs are likely to be successful only if they infringe your brand or somehow threaten a “community” of users.
- Watch the progress of the new TLDs. There is every reason to believe that a material percentage of the proposed TLDs will never see light — not because they will be challenged, but more likely because applicants may not see the application process through because of cost, complexity or other reasons.
- Identify opportunities. It is still early, but ecommerce and other companies might start identifying TLDs on the list for possible domain registration now. Software companies may want to get in under .software and .computer, for example.
- Know the issues. In this blogger’s opinion, too much focus is on the inception of the new TLDs, and not enough on the mechanisms for protecting IP rights once the TLDS are rolled out. The real threat to trademark owners, for example, is not necessarily the existence of the new (largely generic) TLDs, but the potential registrants under those TLDs of second level domains, e.g. BIGBRAND.COMPUTER, BIGBRAND.software, etc. Once these new TLDs are approved, there will be significant new brand protection mechanisms in place in addition to the uniform domain name dispute policy (UDRP) that we are already accustomed to. This includes pre-launch mechanisms such as sunrise periods for trademark claimants, a trademark claimant clearinghouse, and a “rapid suspension” procedure that will work to thwart squatters more rapidly and with less cost than the current UDRP process, among other new mechanisms ICANN requires of its registries. While we are definitely in unchartered territory, there is reason to hope that brand owners will have strong tools to help beat back the squatters and infringers.
- Start, firm up, or re-tool your IP protections and web monitoring practices. As the net expands it will become increasingly important to firm up your IP rights. If you have been considering trademark registration but putting it off, now is probably the right time to to consider a strategy to get on file. While common law trademark rights will still have their place, it is becoming clearer that owning a national trademark registration will definitely put you in a better place defensively and offensively.
Web monitoring tools of all shapes and complexity have been around and evolving for over a decade. Their importance will increase when these new TLDs finally go live. Smart trademark owners should consider whether their monitoring practices need to be stepped up or modified because of the likely increase in activity. If you use third party vendor services to monitor the web, you should be checking with them to be sure their services will cover any new TLDs. In addition, if you use only watch services that monitor (for example) domain name registrations, and you’ve traditionally used human intervention to review new ”hits,” you may wish to consider increasing your monitoring to include automated content monitoring– since the increase in domain name registration activity might result in just too much information for a person to reasonably review.
Although it may seem that the sky is falling in with these new TLDs, there is no cause for panic. As with most new developments, vigilance, education and preparation will help us get past the shoals and into smoother waters.