ICANN’s New gTLD Program Presents Opportunities and Risks for Brand Owners

In 2010, the Internet Corporation for Assigned Names and Numbers (ICANN), the non-profit body dedicated to coordinating the Internet’s unique identifier system, will begin accepting applications for new generic top-level domains (gTLDs).

The new gTLD program presents an unprecedented opportunity for brand owners. While individuals and businesses have historically distinguished themselves with second-level domains (e.g., the “icann” in www.icann.org) and shared gTLDs with their “.com” or “.net” competitors and others, ICANN’s new gTLD program provides a mechanism for brand owners to operate and control an entire universe of internet addresses with common domains. To illustrate, a company such as Microsoft may wish to acquire the gTLD “microsoft,” thereby opening the door to the registration of virtually any conceivable second-level domain with a top-level “microsoft” suffix.

However, where there is opportunity for brand owners, there is also potential for danger. Chief among the concerns of brand owners is that individuals or entities will apply for and obtain a gTLD that is identical or confusingly similar to the brand owner’s trademark. While many brand owners have had to contend with identical or confusingly similar second-level domains from time to time, contending an entire set of infringing top-level domains could present a problem of staggering proportions.

In addition, the acquisition of a gTLD will carry with it the ability to control the registration of second-level domains within that gTLD. Thus, brand owners could acquire gTLDs for the generic name of their products (e.g., “.computers,” “.wine,” or “.jeans.”) and freeze out competitors in the same generic product category. Thus, for example, Apple Computers could acquire the gTLD “.computers” and prevent Hewlet-Packard from registering the domain www.hp.computers.

In response to this and other brand owner concerns, ICANN has set forth proposed applicant screening and dispute resolution procedures in its Applicant Handbook. The current version of the Applicant Handbook is available at ICANN’s website. Importantly, the Applicant Handbook has not been finalized, and, in fact, is open for public comment through November 22, 2009.

While the procedures set forth in the Applicant Handbook likely will filter out obvious trademark conflicts without the brand owner having to intervene (e.g., a company other than Microsoft that attempts to register the gTLD “microsoft”), they may not catch less obvious trademark conflicts. If ICANN does not identify a conflict, it will be up to the band owner to come forward to object to potentially-problematic gTLD applications. Critically, the Applicant handbook provides only a two-week window to make such an objection.

Brand owners should become familiar with ICANN’s new gTLD program, and, specifically, the Applicant Handbook. In addition, even those brand owners who do not wish to apply for a gTLD should closely monitor pending applications, and, if necessary, take prompt action.





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