Until recently, the primary concern for many companies seeking to protect and promote their brand online was to reserve the .com domains corresponding to their key brands, and then perhaps other domains (e.g. .net, .org, .info, .biz, etc.), sometimes for no other reason than to prevent others from using them. Nonprofit organizations might pay more attention to .org, and companies with a mobile focus might make a point of registering in .mobi, but for the vast majority the .com domain was the first and only priority.
Moreover, the focus was predominantly on the word(s) that preceded the gTLD suffix – every brand owner wanted above all to secure “mybrand.com.” A thorough domain name program would also cover variations like “my-brand.com” or “brandonline.com”, as well as the other TLD’s, but the prime objective traditionally has been getting the .com domain exactly matching one’s trademark.
This way of doing things is about to change dramatically.
Over the past year, ICANN (the Internet Corporation for Assigned Names and Numbers) launched a plan to permit the creation of virtually any string of letters as a gTLD, expanding the current universe of 22 gTLDs to a potentially infinite number of possibilities. A confidential registration process for the first round of proposed new gTLDs has been underway since January, and on June 13, ICANN revealed the list of 1,930 applications for new gTLDs. Now, the gTLD itself (what comes after the “dot”) can be a communication tool to consumers. ICANN’s list provides the proposed gTLD (e.g., .art, .gripe, .hilton), the identity of the applicant for the gTLD and how the applicant proposes to use the gTLD. Now that the list of these new proposed gTLDs has been published, companies have only a short window of time to review and respond to potential claims of infringement or confusion. We have prepared the following background summary and step-by-step process so that you will have the tools and understanding of how to both protect and build your brand online.
The New gTLDsThere are currently 22 generic top-level domains (.com, .net, .info., etc.). However, on June 20, 2011, ICANN voted to expand this number significantly. ICANN created an application process where anyone could apply to operate a registry for a new gTLD. The applications fell into three main categories:
- .brands (e.g., .McDonalds, .Hitachi, .Canon)
- .generics and .categories (e.g., .bank, .law, .digital, .inc)
- .community and .geographic (e.g., .Islam, .Berlin)
- An “open” system is one where anyone could register a domain name with the gTLD extension. For example, a current domain registrar (like Network Solutions) may own the .law extension and if Goodwin Procter wanted to have the goodwinprocter.law domain it could register with this registrar.
- A “limited” or “restricted” system is one where the owner of the domain extension sets certain qualification guidelines and controls who can register under their domain extension. For example, the National Cattlemen’s Beef Association may set certain quality control standards that any entity wanting to register under the .beef domain extension would have to follow.
- A “closed” system will likely be the .brands domains that are owned by a single owner. That owner might create an online community for its customers, use it strictly for email addresses or retain it for some other exclusive use; other persons or entities will not be able to register domains under that extension.
Implications of the New gTLDs
It is still unknown how popular these new gTLDs will be, but the number of applicants – nearly 2,000 – was more than many expected. Either way, this vast expansion of the domain name universe may have implications for any business with an Internet presence. The most important issue to be aware of is the risk that someone may have tried to register a gTLD that infringes one of your trademarks. A second issue many businesses must consider is whether and how they will engage with .generic TLDs that pertain to their industry. In general, the sheer increase in the number of potential extensions will profoundly affect how people interact with the Internet. The .com TLD may still remain the top and most coveted extension for most businesses, but companies will have nearly endless options when determining how to structure their domain registration strategies.
What follow are basic steps which we recommend that all of our clients take in order to ensure they and their brands are not left behind in the new gTLD land rush.
STEP 1: Review the List
We recommend that you review the domain list ICANN published yesterday as soon as possible with the following three questions in mind:
(1) Do any of these domains infringe on my brand? Given the extensive application process, high fees and the lack of a secondary market, there is a much lower risk of cybersquatting at the gTLD level than there is with second-level domain names, but it is still wise for brand owners to vet the list to make sure that none of the proposed gTLDs would be likely to cause confusion (even if innocently) with any of their brands.
(2) Are any .generic domains potentially anti-competitive in my industry? If an important .generic gTLD has been applied for in your industry, check who the applicant is. Is it a neutral trade association that will administer the domain impartially? Or is it a competitor who might leverage the domain to secure an unfair competitive advantage?
(3) For the non-.brand extensions (.generic and .community), are there any gTLDs where you may want to register your marks as domains? This question is something for you to discuss now with your marketing and legal teams as you plan your budgets and marketing strategies for the future as these new gTLDs are not expected to go live until 2013.
STEP 2: Contact Us
If your answer to any of these questions above is “yes” then please reach out to your contact at Goodwin Procter and we can assist you in analyzing and developing the best strategy to meet your legal and business objectives.
STEP 3: Understand the Deadlines and Response Options
Comment Period: Now that the gTLD applications have been revealed, anyone may submit public comments for the next 60 days to be analyzed by an evaluation panel. For example, when reviewing the list you may come across extensions that you find confusing, or perhaps you recognize one of the owners as a cybersquatter you have had previous dealings with. These are issues you would want to bring to the attention of the evaluation panel. This public comment period is expected to close by mid-August.
Formal Objection: Companies and other rights-holders will have approximately seven months to file a formal objection against any of the applied for gTLDs revealed in this list. Formal objections must fall into certain strict categories, such as string confusion (i.e., the proposed gTLD is too similar to another TLD), legal rights (most trademark-related claims will fall under this category), limited public interest or a community objection (if the extension is not filed in the interest of the particular community). All formal objections must be received by January 13, 2013, and no later than two weeks following the posting of the Initial Evaluation results (the date when applicants find out if they have met the ICANN criteria). It is important to note, however, that any “legal right” objection based on trademark infringement may be difficult to win. If the applicant plans to use the applied-for extension to responsibly promote its own services and meets all of the ICANN requirements for operation of the new gTLD, it will likely be hard for others to prevent the applicant from moving forward. Thus, for example, if two companies legitimately use the same mark in completely different industries (e.g., Delta Faucets and Delta Airlines), ICANN will not dispossess one of them of the gTLD at the behest of the other.
String Confusion: ICANN will not approve two or more applications for gTLD extensions that are identical or visually similar and thus could lead to user confusion. Applicants that fall into this category will be encouraged to reach a settlement to resolve the process, either by agreeing to jointly use the extension or by paying one party to withdraw its application. If no agreement can be reached there will be an auction process, with the auction funds being reinvested by ICANN into the Internet community. In circumstances of similar/identical extensions, associations will be given priority over single entities when applying for .generic extensions as it is in the public interest.
Trademark Clearinghouse: Policing one’s brands against cybersquatting in this vastly expanded domain universe will become a much larger and more complicated task. In view of this, to help protect brand owners against the registration of infringing domains at the second level (before the dot) ICANN has recently released preliminary information about a Trademark Clearinghouse, to be administered by Deloitte and IBM. The Clearinghouse will act as a central repository of trademark rights against which new domain applications in the gTLD space will be checked. We encourage our trademark clients to consider registering their key brands with the Clearinghouse once it becomes operational; fees are currently estimated to be less than $150 per mark. The Clearinghouse will provide advance notice of any application to register a second-level domain corresponding to the trademark under one of the new gTLDs (e.g., yourbrand.adult). The function of the Clearinghouse will be purely informational; it will then be up to the brand owner to object to the proposed infringing domain under a dispute resolution process similar to the UDRP (Uniform Dispute Resolution Policy) applicable to .com and other TLDs. Details regarding the Clearinghouse, when it will become operational, and how exactly it will work, are not yet available, but will be announced prior to any of the new gTLD registrars accepting applications for new second-level domains.
Launch of New gTLDs
For applicants that move through the process smoothly, we can expect to see the new gTLDs in the cyber-sphere starting in mid-2013. All approved new gTLDs must be active within 12 months from the date of approval by ICANN. ICANN has also announced its intention to proceed with a second round of gTLD’s “as expeditiously as possible,” but that is not expected to happen until well into 2013 at the earliest.
The massive expansion of the domain name universe which began June 13 presents trademark owners with both opportunities and challenges for building and protecting their brands online. We encourage our clients to review the list with an eye to both domains that pose trademark or competition threats now, and domains that pose brand-building opportunities down the road. Please contact us with any questions or concerns.