Cyberspace Land Rush Coming

On Jan. 12, 2012, the Internet Corp. for Assigned Names and Numbers (ICANN), the organization governing the assignment of Internet addresses, will begin accepting applications to expand the Internet registry space by allowing entities to create, register and operate customized generic top-level domains (gTLDs). This program, which affords organizations the unprecedented opportunity to stake their own claim in cyberspace by owning and operating their own gTLDs, has the potential to cause significant change in the way users navigate the Internet. Rather than searching for and using extensions such as dot-com, dot-net and the handful of others dominating the Internet, users might navigate toward websites at a variety of dot-generic and dot-brand extensions. (For background on ICANN's decision and more on the application process, see, “From Dot-Com to Dot-Whatever: What You Need to Know As ICANN Approves Unlimited New Top-Level Domains,” in the July 2011 issue of Internet Law & Strategy, http://bit.ly/nNNeIn.

Only time will tell whether the new gTLD program will generate a cyberspace rush, but ICANN experts expect there to be anywhere between 300 and 1,000 new gTLD applications. Those ready to stake their claim should be prepared ' it won't be as simple as showing up in January and being the first to register. Rather, because new gTLD applications are expected to be highly complex documents of several hundred pages and will require partnering with expert counsel, preparing a successful application will likely take months. Organizations are advised to begin their planning process as soon as possible. Even organizations that are not applying will want to begin planning to adapt their online enforcement strategies to account for the expanding domain space.

Control Your Cyberspace

The new gTLD opportunity offers many potential benefits. For the first time, a brand owner can control its own space on the Internet by securing and controlling a gTLD composed of its brand. Having the power to fully customize the right as well as the left of the dot in a domain name can allow for a truly unique and recognizable Internet presence. For example, a financial institution named Nostradamus could use its own gTLD to organize its products so that customers could easily locate information about them, for example, at mutualfunds.nostradamus. In this way, consumers can be assured that the company they are searching for controls the website.

Moreover, as organizations would have complete control of their cyberspace, concerns about cybersquatting, typosquatting, domain-name expirations, phishing, fraud and counterfeiting would be greatly reduced. Third parties could be kept from registering domain names under the gTLD, allowing brand owners to communicate to customers that only authentic products are sold at sites ending in dot-brand. Brand owners would be able to provide personalized Web spaces to their sales force, affiliates and licensees, and could even provide domain names in non-Latin character sets. Finally, brand owners could be seen as technological innovators.

Preparation Required

Although participation in the new gTLD program offers many potential business, branding and security benefits, it is also an intricate process requiring both a great deal of internal planning and detailed coordination with outside counsel experienced in navigating ICANN matters and understanding the many technical issues involved with operating a registry. In addition to preparing the application itself, a number of other steps will be required:

• Ensuring that relevant stakeholders are aware of the program, its opportunities, the final timeline and potential risks of not participating;
• Creating a cross-functional team of stakeholders to make business decisions regarding the program, including input at the executive level;
• Assessing budgetary, staffing and technical resources required to apply for a new gTLD and operate an Internet registry (likely of at least $1 million); plus additional resources for dispute resolution, a potential auction, marketing campaigns (internal and/or external) and staffing requirements;
• Conducting a thorough evaluation of legal considerations, including clearance for desired gTLDs, known as “strings,” preparing a brand-enforcement strategy, determining the business structure of registry operations, and negotiating the required registry agreement with ICANN; and
• Coordinating with tech staff to complete the application's technical aspects.

It is advised that counsel immediately bring the program to the attention of executives and other business and marketing decision makers, and consult with outside counsel that are experts in the Internet space, particularly in dealing with ICANN.

Planning for Enforcement

Even if brand owners are not applying, the exponential expansion of the Internet space creates a significant challenge for them to ensure that their marks are not misappropriated in this new space. Accordingly, counsel should begin immediately developing an updated enforcement strategy and allocating additional
resources needed in 2012 and beyond.

When making these evaluations, counsel need to be aware of the unique rights-protection mechanisms built into ICANN's new gTLD program.

Following the close of the application submission period, ICANN will post portions of all new gTLD applications. Interested parties will then have approximately seven months to file formal objections based on four grounds: string confusion; legal rights; limited public interest; and community. In addition, the Governmental Advisory Committee will be able to object to applications.

The legal rights objection is likely the option that will be most useful and important for brand owners, which do not have to be applicants. Accordingly, even trademark owners that do not apply for a new gTLD should monitor posted applications.

Brand owners also need to prepare to enforce their brands at the second level (i.e., to the left of the dot). Accordingly, there are two mandatory rights-protection mechanisms to aid in the prevention of domain-name abuse: the Trademark Claims Service and the Sunrise Service.

To facilitate the Trademark Claims and Sunrise services, a trademark clearinghouse will serve as a worldwide database of marks. Even if not applying for their own new gTLDs, brand owners should submit their most important marks to the clearinghouse. The Sunrise Service permits a trademark holder of a mark in the clearinghouse to preregister domains identical to its mark(s). The Trademark Claims Service, on the other hand, warns trademark owners and prospective domain registrants that a second-level domain is identical to a mark in the clearinghouse.

After the Trademark Claims and Sunrise services have concluded for each new gTLD, it is likely that third parties will register infringing domain names. In that event, trademark owners can take advantage of the Uniform Rapid Suspension System and the Uniform Domain Name Dispute Resolution Policy procedures to protect their rights.

The Uniform Rapid Suspension System process, a new and unique procedure introduced with the new gTLD program, is intended as a quick and low-cost method of disabling an infringing domain name, and is used for relatively clear-cut cases of trademark abuse. If the brand owner's complaint is against the policies of the registry operator itself, rather than concerning one or more domain-name registrants, ICANN will offer a post-delegation dispute resolution procedure.

Conclusion

The Internet landscape is set to change dramatically in the near future, and those who are not prepared for the shift may find the array of potential new business benefits ' and opportunities for infringement ' to be rather overwhelming. By learning about the new gTLD program now, brand owners will be prepared to protect their valuable trademark rights in this growing space as the Internet evolves in the coming years.

On Jan. 12, 2012, the Internet Corp. for Assigned Names and Numbers (ICANN), the organization governing the assignment of Internet addresses, will begin accepting applications to expand the Internet registry space by allowing entities to create, register and operate customized generic top-level domains (gTLDs). This program, which affords organizations the unprecedented opportunity to stake their own claim in cyberspace by owning and operating their own gTLDs, has the potential to cause significant change in the way users navigate the Internet. Rather than searching for and using extensions such as dot-com, dot-net and the handful of others dominating the Internet, users might navigate toward websites at a variety of dot-generic and dot-brand extensions. (For background on ICANN's decision and more on the application process, see, “From Dot-Com to Dot-Whatever: What You Need to Know As ICANN Approves Unlimited New Top-Level Domains,” in the July 2011 issue of Internet Law & Strategy, http://bit.ly/nNNeIn.

Only time will tell whether the new gTLD program will generate a cyberspace rush, but ICANN experts expect there to be anywhere between 300 and 1,000 new gTLD applications. Those ready to stake their claim should be prepared ' it won't be as simple as showing up in January and being the first to register. Rather, because new gTLD applications are expected to be highly complex documents of several hundred pages and will require partnering with expert counsel, preparing a successful application will likely take months. Organizations are advised to begin their planning process as soon as possible. Even organizations that are not applying will want to begin planning to adapt their online enforcement strategies to account for the expanding domain space.

Control Your Cyberspace

The new gTLD opportunity offers many potential benefits. For the first time, a brand owner can control its own space on the Internet by securing and controlling a gTLD composed of its brand. Having the power to fully customize the right as well as the left of the dot in a domain name can allow for a truly unique and recognizable Internet presence. For example, a financial institution named Nostradamus could use its own gTLD to organize its products so that customers could easily locate information about them, for example, at mutualfunds.nostradamus. In this way, consumers can be assured that the company they are searching for controls the website.

Moreover, as organizations would have complete control of their cyberspace, concerns about cybersquatting, typosquatting, domain-name expirations, phishing, fraud and counterfeiting would be greatly reduced. Third parties could be kept from registering domain names under the gTLD, allowing brand owners to communicate to customers that only authentic products are sold at sites ending in dot-brand. Brand owners would be able to provide personalized Web spaces to their sales force, affiliates and licensees, and could even provide domain names in non-Latin character sets. Finally, brand owners could be seen as technological innovators.

Preparation Required

Although participation in the new gTLD program offers many potential business, branding and security benefits, it is also an intricate process requiring both a great deal of internal planning and detailed coordination with outside counsel experienced in navigating ICANN matters and understanding the many technical issues involved with operating a registry. In addition to preparing the application itself, a number of other steps will be required:

• Ensuring that relevant stakeholders are aware of the program, its opportunities, the final timeline and potential risks of not participating;
• Creating a cross-functional team of stakeholders to make business decisions regarding the program, including input at the executive level;
• Assessing budgetary, staffing and technical resources required to apply for a new gTLD and operate an Internet registry (likely of at least $1 million); plus additional resources for dispute resolution, a potential auction, marketing campaigns (internal and/or external) and staffing requirements;
• Conducting a thorough evaluation of legal considerations, including clearance for desired gTLDs, known as “strings,” preparing a brand-enforcement strategy, determining the business structure of registry operations, and negotiating the required registry agreement with ICANN; and
• Coordinating with tech staff to complete the application's technical aspects.

It is advised that counsel immediately bring the program to the attention of executives and other business and marketing decision makers, and consult with outside counsel that are experts in the Internet space, particularly in dealing with ICANN.

Planning for Enforcement

Even if brand owners are not applying, the exponential expansion of the Internet space creates a significant challenge for them to ensure that their marks are not misappropriated in this new space. Accordingly, counsel should begin immediately developing an updated enforcement strategy and allocating additional
resources needed in 2012 and beyond.

When making these evaluations, counsel need to be aware of the unique rights-protection mechanisms built into ICANN's new gTLD program.

Following the close of the application submission period, ICANN will post portions of all new gTLD applications. Interested parties will then have approximately seven months to file formal objections based on four grounds: string confusion; legal rights; limited public interest; and community. In addition, the Governmental Advisory Committee will be able to object to applications.

The legal rights objection is likely the option that will be most useful and important for brand owners, which do not have to be applicants. Accordingly, even trademark owners that do not apply for a new gTLD should monitor posted applications.

Brand owners also need to prepare to enforce their brands at the second level (i.e., to the left of the dot). Accordingly, there are two mandatory rights-protection mechanisms to aid in the prevention of domain-name abuse: the Trademark Claims Service and the Sunrise Service.

To facilitate the Trademark Claims and Sunrise services, a trademark clearinghouse will serve as a worldwide database of marks. Even if not applying for their own new gTLDs, brand owners should submit their most important marks to the clearinghouse. The Sunrise Service permits a trademark holder of a mark in the clearinghouse to preregister domains identical to its mark(s). The Trademark Claims Service, on the other hand, warns trademark owners and prospective domain registrants that a second-level domain is identical to a mark in the clearinghouse.

After the Trademark Claims and Sunrise services have concluded for each new gTLD, it is likely that third parties will register infringing domain names. In that event, trademark owners can take advantage of the Uniform Rapid Suspension System and the Uniform Domain Name Dispute Resolution Policy procedures to protect their rights.

The Uniform Rapid Suspension System process, a new and unique procedure introduced with the new gTLD program, is intended as a quick and low-cost method of disabling an infringing domain name, and is used for relatively clear-cut cases of trademark abuse. If the brand owner's complaint is against the policies of the registry operator itself, rather than concerning one or more domain-name registrants, ICANN will offer a post-delegation dispute resolution procedure.

Conclusion

The Internet landscape is set to change dramatically in the near future, and those who are not prepared for the shift may find the array of potential new business benefits ' and opportunities for infringement ' to be rather overwhelming. By learning about the new gTLD program now, brand owners will be prepared to protect their valuable trademark rights in this growing space as the Internet evolves in the coming years.