Decision Time: Trademarks and the New World of Domain Names


After years of online and offline discussions, international meetings, and many versions of proposed controlling documents, in June 2011 ICANN (described below) voted to allow up to 1,000 new top-level domains (TLDs) on the Internet in the near future. At least 500 applications for new TLDs are expected in the first round. Many businesses have been proceeding with the assumption that this complex and expensive expansion of the domain name system would be eventually rejected or substantially delayed, or that an easy and cost-effective mechanism to protect trademarks across domain name registries would be provided as part of the expansion. So far, neither of those assumptions has proved correct. Although some organizations are considering legal and political challenges to slow down this process, unless and until that happens, every entity with a commercial interest in the Internet needs to consider its online marketing plan in light of the dramatically new domain name world ahead. Following are some important questions that should be considered when creating such a plan.


The Internet Corporation for Assigned Names and Numbers (ICANN) is a California nonprofit organization tasked with administering certain Internet governance functions, including domain name administration. ICANN is controlled by a “web” of interested parties, including governmental representatives, individuals, and institutions, and it is subject to critical contractual arrangements with the U.S. Department of Commerce.


TLDs are the letters to the right of the dot in a domain name (and by extension, a website or email address). ICANN’s proposed new TLDs will be able to be used to identify (i) a specific online community: .sport, .food; (ii) a geographic location: .nyc, .berlin; or (iii) a brand: .canon. As a result, we could see email addresses like, or a website address like

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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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