Publications

17 Jan 2012

Dot anything?: quick action needed as new domain name application period opens

Intellectual Property and Technology Alert

Gina Durham

The Internet Corporation for Assigned Names and Numbers (ICANN) has just begun accepting applications for the new generic top-level domain (gTLD) program.  This program allows organizations to own their own top-level domain extension and is intended to greatly proliferate the number of available domain extensions beyond the “.com,” “.org” and limited number of other extensions to which Internet users are accustomed. 

With a few exceptions, organizations can apply to have almost anything to the right of the dot, including their company’s own brand name or a generic term.

Prospective applicants need to move quickly

The application period is limited, scheduled to last only from January 12, 2012 through April 12, 2012 (with March 29 being the last day to register with ICANN’s electronic system, which is a precondition to filing the application).  It is unknown when an additional application period will be offered, if ever. 

Given the possibility that this program could drastically change the face of the Internet as we know it, many organizations have been busy vetting the prospect of whether to apply for a new gTLD. 

Applicant considerations

Because owning your own customized gTLD is a significant undertaking, requiring operation of an Internet registry, the decision as to whether to apply is complex and includes a mixture of business and legal considerations.  In vetting whether to be an applicant, organizations have considered a variety of perceived pros and cons associated with the new gTLD program, including:

Potential pros

• Unified brand presence and ability to control domain name registrations on a second level
• Ability to pioneer a new business model on the Internet
• Increased opportunity for web security and authentication, including potential reduction in phishing, fraud and confusion as consumers are properly educated to always look for you “to the right of the dot”
• The opportunity to have a first mover advantage in the marketplace – or to not be left behind if your competitors move to a new gTLD presence while your organization does not
• Ability to more effectively manage and leverage community/consumers

Potential cons

• Unclear how consumers will react to new gTLDs and how search engines will treat them
• Expense associated with application ($185,000 +), in addition to expense associated with operating a registry once gTLD is awarded (most organizations will need to outsource the technical function)
• Ten-year commitment under registry agreement with ICANN
• New marketing needed to educate the public

Organizations that have not yet finalized decisions about whether to apply should decide quickly, so they have appropriate time to complete the complex application process and make other business arrangements required to launch a gTLD. 

Organizations that have decided not to apply should also be considering their next steps, given the changes that the new gTLD program will bring to bear.

Next steps for non-applicants: will someone apply for your brand name?

The natural concern for non-applicants is that another organization will apply to own a gTLD that includes a brand name of the non-applicant or a generic industry name (such as .hotel, .airline, .beverage) that the non-applicant does not want a competitor to monopolize.  Another concern is that cybersquatting will proliferate once the new domains are launched and hundreds of new organizations are selling an infinite number of second-level domain names (i.e., the words to the left of the dot) within their new domain extensions.

In light of these concerns, non-applicants and applicants alike are considering developing strategies that will protect their brand names and internet presence in the wake of the new gTLD roll out.  There are certain procedures including objections during a publication period and a trademark clearinghouse that organizations might consider in these strategies.

For more information on planning and strategies to consider in this phase of the gTLD expansion, please contact:

Ann K. Ford

Keith Medansky

Gina Durham

David Kramer

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