Historic Internet Domain Name Expansion Creates Opportunities and Challenges for Brand Owners


The organization charged with managing the Internet’s domain name system, the Internet Corporation for Assigned Names and Numbers (ICANN), recently approved a long-pending and highly controversial plan to allow for the dramatic expansion of generic top level domains (gTLDs), the most common of which currently are dot-COM, dot-NET, and dot-ORG. Starting January 12, 2012, ICANN will begin accepting applications for new gTLDs that can be comprised of any letter or number string, including trademarks, generic terms, or other combinations. ICANN will charge an $185,000 filing fee for each application for a new gTLD and there will be considerable additional costs and requirements for approval and issuance of the new gTLD. ICANN has indicated it will allow up to 1,000 new gTLDs to be brought online each year. As a result of this new program, the challenges many trademark owners face in protecting their rights on the Internet will soon multiply. We have outlined below some important considerations for brand owners, as well as provided a summary of the steps and timing relating to the applications to register new gTLDs.

ICANN has long expected that many trademark owners will apply to register their own marks as gTLDs once the process is under way. Many top brand owners are in the process of weighing the benefits to actually getting involved in this new development—and not just defensively. Canon Inc., for example, announced early last year that it had “made the official decision” to acquire “.canon” when the application process finally opens. There are a number of benefits a trademark owner may obtain through registration of a new dot-BRAND gTLD, including attracting more Internet users though enhanced search engine rankings due to incorporating the trademark into the domain name, being able to consolidate multiple websites under a single gTLD suffix, and an intuitively found and easily remembered address for their entire online presence. Canon is not alone, as Hitachi recently announced plans to apply for “.HITACHI,” and the City of New York is already considering how it will use the “.NYC” gTLD if its planned application is approved.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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