New Internet Domain Name Program Begins, Despite Concerns

January 12, 2012

On January 12, 2012, ICANN, the Internet Corporation for Assigned Names and Numbers, began accepting applications to register new Generic Top Level Domains (gTLDs). Because the deadline for applying in this first round is April 12, 2012, and the application process requires an applicant to arrange for extensive technical and registry support services, companies considering the purchase of a new gTLD need to decide soon whether to proceed. Obtaining and running a new gTLD could cost in excess of $2 million over the first 5 years of the 10-year ICANN registry contracts.

ICANN’s Board also has announced that it will be publishing a new version of a guidebook for applicants. It is not yet known what changes might be included in this version. However, it might respond to some of the criticisms that various business organizations – including the Association of National Advertisers (ANA) and members of the U.S. Congress and Department of Commerce – have leveled against ICANN.

Companies that have decided not to seek a new gTLD due to budgetary or other reasons can nonetheless take this roll-out as a clarion call to develop strategies and policies for their online presence and trademark defenses in the new domain name space.

ICANN’s governing board has stated that it is in the process of selecting a trademark clearinghouse operator to simplify brand owners’ trademark blocking process in the new gTLD space. ICANN hopes to announce the costs and procedures this summer. Trademark registration will be a keystone of the program.

Companies should review their trademark and domain name portfolios and discuss their online presence and plans with experienced counsel. Attorneys at Marshall, Gerstein & Borun are experienced in the protection of intellectual property rights on the Internet. They are available to discuss how your company might be impacted and how you can protect your company’s valuable rights on the Internet.

This alert is intended to be informative and should not be interpreted as legal counsel for any specific fact situation. The information contained herein is for informational purposes only and is not legal advice or a substitute for legal counsel. Readers should not act upon the information presented without consulting professional legal counsel. Pursuant to applicable rules of professional conduct, this communication may constitute Attorney Advertising. © 2011 MARSHALL, GERSTEIN & BORUN LLP, Chicago, Illinois. All rights reserved.