TLDs and Domain Names

Internet Expansion: How to Protect Your Interests

The Internet's naming system is undergoing profound change. The Internet Corporation for Assigned Names and Numbers (ICANN) is enabling a large number of generic top-level domains (gTLDs) to be added to the existing domain name system under a recently-launched global initiative called the "New gTLD Program." These new gTLDs will be in addition to those with which we are all familiar, such as .com, .info, .org, and .gov, as well as country code Top-Level Domains such as .us, , .ca, .fr, .uk, and .be. In doing so, ICANN has made it possible for corporations, governments, and organizations to obtain " their own" TLDs, as shown in the following examples:

A city:

.london, .nyc, .paris, etc.

A corporation (brand TLDs):

.dupont, .deloitte, etc.

An industry:

.hotel, .music, .bank, .beauty, etc.

A language-based community:

.arab and .عربي

A "true" generic TLD:

.shop, .web, .app, etc.

It is anticipated that website access and email traffic will greatly expand through the use of many new domain names that will be registered in these new TLDs. This Internet expansion will likely increase the opportunities for commerce, but will also present significant challenges regarding brand protection, online fraud, and abuse.

On June 13, 2012, ICANN published the list of gTLDs that have been applied for as well as the names of the applicants. On December 17, 2012, ICANN announced the order in which the applications are being processed; and according to ICANN's current timeline, the first new gTLD may go live in Q3 of 2013. As a result, the Internet name space will continue to expand as each new TLD launches.

In addition to the present expansion, ICANN has also expressed its intention to organize an additional round for even more new gTLDs (the current round yielded over 1900 applications). ICANN expects this additional round to take place shortly after the current round is "completed," and currently intends preparation to begin for the next round of expansion in late 2013 or early 2014.  The Internet space will further evolve as a result of ICANN's successive gTLD rounds.

What are the challenges of this expansion

The introduction of new gTLDs will bring new challenges for brand owners and other organizations, whether they have applied for a gTLD or not.

For example (non-applicants):

  • What should you do if a company has applied for a gTLD that impacts or "captures" your industry?
  • What should you do if a company has applied for a gTLD that is identical or confusingly similar to your brand or business name?
  • When should you consider registering domain names in the new gTLDs?
  • Can registration of domain names resembling your own brand or existing domain names (in other TLDs) be blocked in a new gTLD?

For example (applicants):

  • If you have applied for a gTLD, and there are other applicants for the same or similar string, what can you legally do to assure your application's success?
  • If you have applied for a gTLD, how do you make sure that your TLD is in a position to be launched as soon as possible?
  • If you have applied for a gTLD, how can you avoid interference from outsiders, brand holders, or government regulators as you launch and operate the new TLD?  

These are only a few of the questions that the introduction of new gTLDs will present. Meeting the challenges will require monitoring the new gTLD process, spotting and analyzing any issues as they develop, considering your strategic options, and navigating the complex world of Internet governance .

What steps should you take?

There is a wide range of actions you may need to consider, from strategies for defending your own application to contesting the applications of others. Brand holders will also want to protect their trademarks and existing domain names in the new Internet space.

The new gTLD system within ICANN provides for participation by applicants, rights holders, community organizations, and governments in the application process. These opportunities include alternative dispute mechanisms with the World Intellectual Property Organisation (WIPO), the International Chamber of Commerce (ICC), and the International Centre for Dispute Resolution (ICDR) for handling disputes with an applicant for a particular gTLD.

Apart from seeking to formally intervene against an application itself, it is also possible for a company to take action outside of ICANN's prescribed challenge system, be that through lobbying efforts or court action.

How can we help?

Crowell & Moring's interdisciplinary team has assisted numerous Fortune 100, CAC 40 and other multinational companies in developing their new gTLD strategy and in preparing their applications for new gTLDs.

We have also developed a program to help monitor the applications. Based on the published list of applications, we have already helped identifying any significant concerns and developed strategic options for addressing those concerns, whether those concerns are from the perspective of an applicant wanting to ensure that its application is approved and a TLD is launched, to the perspective of a non-applicant, who is concerned that a particular new TLD will adversely impact its rights or business.

Crowell & Moring has unique expertise in vindicating the interests of aggrieved parties in the gTLD and domain name sphere. Our firm has been successful in challenging decisions of ICANN, and we have extensive experience in handling domain name disputes, both in courts and through alternative dispute resolution.

We are ready to help you monitor the new gTLD applications and ICANN developments, develop strategic options meeting your business needs, communicate with stakeholders, negotiate with applicants, prepare objections or other formal intervention mechanisms, navigate ICANN's rights protection mechanisms regime (including the Trademark Clearinghouse and Uniform Rapid Suspension), or take other appropriate legal action.

Our experience:

  • Crowell & Moring assisted in preparation of nearly 100 applications for new TLDs.
  • Crowell & Moring has been the leader in successfully challenging ICANN's actions regarding the creation of new TLDs.
  • Crowell & Moring is currently advising many clients (both applicants and non-applicants) regarding options to protect their business interests during the consideration and potential launch of the new TLDs.
  • Crowell & Moring is presently representing clients in cutting-edge litigation with ICANN.
  • Crowell & Moring has handled several hundreds of domain name disputes, both on behalf of clients and as arbitrators under WIPO's dispute resolution procedures.

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