The advent of “.anything”

Be sure to consult intellectual property experts when creating custom generic top-level domain suffixes.

In June, the Internet Corporation for Assigned Names and Numbers (ICANN), the regulatory body that oversees the Internet’s domain name system, approved a plan to expand on generic top-level domain (gTLD) extensions. The plan will soon allow virtually anyone to apply for their own custom gTLD suffixes. In addition to the current limited number (22, at last count) of defined gTLDs (e.g., .com, .org, .net, .info, .edu, .gov, etc.), the new plan will reorganize the Internet to allow for there to be “.anything.” The gTLDs can be as long as 63 characters and can consist of almost any word in any language. 

Clearly, this landmark move signals a watershed moment in the development of the Internet. With the ability to create “.anything” domain names, the organization of the Internet now has the potential to become much more confusing, a fertile breeding ground for increased cybersquatting and trademark infringement. Many commentators believe this new expansion will dramatically change the ways in which web surfers use and approach Internet websites. At the same time, the new ICANN initiative will open up creative branding opportunities for companies, municipalities and other owners of intellectual property. It is anticipated that many corporations and businesses will apply for gTLDs based on their brands. The ability to use non-Latin characters (such as Cyrillic, Arabic and Chinese) also will increase the number of new gTLDs. Industry analysts predict this new program will usher in 500 to 1,000 new gTLDs, mostly reflecting the names of companies and products, but also cities and generic names like .bank and .sport.

Overview of the application process

Once ICANN opens the formal application period, which is expected to occur on Jan. 12, 2012, companies must submit their applications within a three-month window of time. Applicants will be required to describe in their applications the rights protection mechanism they propose for second-level registrations, but will not be required to own a trademark in the proposed gTLD. Unlike the typical domain name registration process by which anyone can purchase a single or multiple available domain names such as “i-love-domains.com” from an already existing domain name registrar by paying a nominal fee, these new gTLDs will essentially allow an applicant to form and operate a new gTLD registry. For that reason, the initial price to apply for a new gTLD extension is steep—$185,000 for each gTLD extension application. While the application fee itself is quite high, there may also be other costs involved, such as dealing with any third-party objections to one’s application, and applicants may also need to outsource many services based on the many legal and technical issues involved in owning and operating a registry. Overall, most experts estimate that the total fees and costs associated with the application and evaluation process, together with operational costs and legal fees, could total as much as $2 million over a one- to two- year period.

ICANN will use a dedicated web-based application interface through which applicants will submit their applications as well as supporting documentation. After the application window closes, the application will be evaluated in several stages, each with its own estimated time duration. The total evaluation process is expected to last eight to 18 months. In the event that ICANN receives multiple applications for the same or “confusingly similar” gTLD extensions, the pre-selected evaluation panels will be responsible for coming to a final determination based on certain established contention procedures.

After the initial application period closes, which is currently set to be April 12, 2012, ICANN will verify that all of the applications are complete and will then release the list of all gTLD extensions, applicant names and other application data. This will then start an approximately six-month period of time for third parties to file a formal objection using pre-established dispute resolution procedures. Any such formal objections will be adjudicated by independent dispute resolution service providers, not by ICANN.

Once an application has passed all evaluation and selection procedures, including the public objection process, the application will be deemed approved. This approval is not expected to occur any sooner than November 2012. An applicant is then required to sign a registry agreement with ICANN and pass technical pre-delegation tests before a new gTLD can be assigned. The new gTLD is expected to be delegated within one year of execution of the registry agreement.

Because the application procedure is complex and time-consuming, it is a good idea to enlist the help of qualified intellectual property counsel.

This article is part one of a two-part series.

Contributing Author

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Farah Bhatti

Farah Bhatti is a shareholder and chair of Buchalter Nemer’s Intellectual Property Practice Group. She can be reached at 949.224.6291 or fbhatti@buchalter.com.

 

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Contributing Author

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Annie Albertson

Annie Albertson is an attorney in the Intellectual Property Practice Group in Buchalter Nemer's Los Angeles office. She can be reached at 213.891.5102 or aalbertson@buchalter.com.

 

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