Ryan Boudreaux explains ICANN's new application program for generic top-level domain (gTLD) names and gets some expert legal input on the complicated issues that may arise.
On June 20, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the launch of the new gTLD (generic top level domain ) application window which opened up on January 12, 2012 as planned. Even prior to the application window opening, the new gTLD program was getting mixed reviews among industry, government, and some law enforcement agencies.
A major apprehension of some corporations and associations is potential copyright and trademark violations that could result in new extensions. The other worry is financial in nature, given that each new generic top level domain name application would cost $185,000 payable to ICANN plus associated technical fees.
According to this ICANN blog post, the previous seven-year history of transparent debate, discussion, and comment resulted in 2,400 public comments from 47 extended comment periods, which are included in a 1,400-page summary and analysis, generated from ten independent expert working groups including 59 memoranda and independent reports. ICANN maintains that many of the comment recommendations were adopted for the new gTLD program, which will have an application window until April 12, 2012. However the last day to register into the TLD Application System (TAS) is March 29, 2012. The TAS includes a 50-question questionnaire which is detailed in the Applicant Guidebook.
What does the new gTLD program mean? It means that during the current application window, ICANN will accept applications for new generic top-level domains (gTLDs); in essence, the world of .com, .gov, .org and 19 other gTLDs will soon be expanded to include all types of words including terms from many different languages. For the first time, generic TLDs can include words in non-Latin languages, such as Cyrillic, Chinese or Arabic for example.
Asking a legal expert about gTLD applications
To get some insight into how the new gTLD program will work and how organizations and corporations might make their decisions on whether to file a gTLD application, I asked copyright, trademark, and web domain legal expert David Weslow (Attorney At Law with Wiley Rein, LLP) about the implications, ramifications, and effects for organizations and how they should approach the new gTLD application window.Q: Now that the new gTLD application window is open, how do you feel it is being received by industries and government?
Companies that make the initial investment during the current application window might have a significant advantage in the marketplace if consumers recognize and use the new extensions; if consumers do not make the switch, it might not pay off. Several gTLD program advocates generally believe that over time, as consumers begin to see more and more live dot brand names, dot geographic names, or dot category names, there will be an increased recognition of the new extensions and increased use of second level domains within the new extensions. Once the applications are published by ICANN on May 1st, we will see which companies are putting the resources toward them. Come early 2013, we will likely see new extensions going live and we will most likely start seeing advertising for the sale of second level names soon after. For example, if an organization acquires the dot baby gTLD, then this organization could sell second level domains like formula.baby, diapers.baby, etc.Q: Are you getting a lot of questions from corporations with respect to the new gTLD program, and if so, what are the concerns?
Probably the largest initial concern for many organizations is whether there are potential opportunities for cyber squatting of a new gTLD and whether someone could register the organization's brand names or company name at the "top-level" for cyber squatting purposes. The short answer is: probably not. It would cost too much for a cyber squatter, and the ICANN application process itself will explore the background of the applying company, as well as its financial and technical resources and plans for use of the gTLD, before approving any new gTLD. And, there is also an opposition procedure that will allow organizations to object to the issuance of a gTLD to a particular entity, which will be available once the applications are made public on May 1st. So, there are mechanisms in place to avoid this type of threat on the top level domains.
There are more significant concerns, however, to the selling of second-level domains that may infringe trademark rights or be used to display or make available content that infringes copyrights. For example, if someone obtains the dot server gTLD and then they start selling second level .server domains to the public, companies that operate in this space may need to monitor the sale and use of these domain names for potential intellectual property infringements. This problem could be multiplied when 100's of new extensions go live. There is no reason to panic, but it is important for all organizations to begin evaluating the potential implications of the gTLD program because part of a company's strategy may involve consideration of applying for a dot company name domain so as to focus marketing efforts on the company's .brand extension and to ignore irrelevant new extensions.Q: Who controls second-level domains in a new gTLD?
A: On May 1st ICANN will publish a list of who has filed applications for new gTLDs, so it will be interesting to see all that have applied. The published applications will give organizations a sense of what the Internet may look like over the next few years and should allow for further online branding and brand protection strategy planning. Once the applications are published, opposition and comment windows will also open. Non conversional applications should go live in early 2013; for example; dot brands and non-controversial dot geographics and dot categories. For applications involved in opposition proceedings or litigation, it could take quite a long time for the disputes to be resolved. Given the potentially significant implications of obtaining a 10-year lawful monopoly over use of a gTLD, I would not be surprised to see a decent amount of litigation involving gTLD applicants and potentially even ICANN. ICANN has even budgeted a portion of gTLD application fees to be used to fund ICANN's litigation defense in cases that may be filed. .
ICANN has refused to indicate when the next application window will open, and it could be as far out as 3 - 6 years, given that the current program has a six plus year history. ICANN is required by its contract with the U.S. government to evaluate and report on the completed current gTLD program, and it will presumably be another a year or two before a report is released. Then maybe ICANN will open another application window, but there is still too much unfinished at this stage to try to predict when the next application window will be-particularly in light of ICANN's refusal to speculate on this point.