January 27, 2012

As first reported in June, ICANN (the Internet Corporation for Assigned Names and Numbers that administers Internet domains) has liberalized the generic top-level domain system. Earlier this month, ICANN opened the first of its planned application periods for new generic top-level domains (“gTLDs”), which are the Internet extensions (such as .com, .net, .org, and .info) that appear in email and website addresses.

Under the new rules, applicants may now apply to introduce and operate new gTLDs of their own choosing. A successful applicant will then own the registry for its new gTLD. The applicant will be able to control the gTLD and may choose to sell domain names in the new gTLD or to restrict the gTLD to promote its own brand, company, association, or geographic region. These new gTLDs have the potential to change the way people find information on the Internet in the years ahead and the way in which businesses plan, structure, and organize their online presence.

New gTLDs may consist of essentially any word, including generic names of goods or services (such as .hotel, .shop, .eco, or .health), brand names, trademarks, company names, personal names, or geographic names of cities, states, countries, or regions. New gTLDs may include non-Latin characters.  

To apply, applicants must first register in ICANN’s online application system by March 29, 2012, and then must complete and submit an application with filing fee by April 12, 2012. The cost to apply is substantial and the process is very involved. ICANN anticipates receiving several hundred applications for new gTLDs as part of this first round of applications.

ICANN will offer opportunities for brand owners and other interested parties to comment on and object to the registration of applied-for gTLD strings. Tentatively, on May 1, 2012, ICANN will post all of the new gTLD character strings applied for during the application period and identify the corresponding applicants. The period for commenting on applied-for strings will close on June 30, 2012. The period for lodging a formal objection to any new gTLD application will run for seven months and will tentatively close on December 1, 2012. Brand owners with registered trademark rights may file formal objections against applications for infringing TLD strings using the dispute resolution provider designated by ICANN.     

Although applying for a new gTLD will not make economic sense for many brand owners, brand owners are encouraged to monitor the gTLDs under application for possible trademark infringements or other concerns.

If you are interested in applying for a gTLD, Fitch Even can assist, and we look forward to working with you. Given the deadlines and the complexity of the application process, we encourage you to contact us promptly.

We will continue to provide updates on further related developments. If you have any questions regarding the application process, please contact Fitch Even partner Joseph T. Nabor.

--Written by Fitch Even attorney Alisa C. Simmons