On June 20, the Board of Directors of the Internet Corporation for Assigned Names and Numbers (ICANN) approved the controversial plan to launch a new system that will substantially increase the number of generic Top-Level Domains (gTLDs). The new system will allow brand owners to register their own gTLDs - i.e., ".brand" - as well as open the floodgates for the creation of potentially hundreds of new domain names based upon generic terms like ".travel", “.bank”, and ".nyc." ICANN will accept the first round of applications from January 12, 2012, to April 12, 2012, and many of the new gTLDs are expected to go live later in 2012.

ICANN is expected to approve 200 to 400 new gTLDs during the first round of applications – additional rounds will follow. The sheer scope of the new gTLD space can be daunting for IP owners already grappling with online enforcement issues and costs within the existing 22 gTLDs.

Rod Beckstrom, ICANN’s president and chief executive officer, is touting the new gTLD system as an opportunity "to better serve all of mankind." Not all IP owners are as sanguine. Many are justifiably concerned that the new system will be of more value to cybersquatters and counterfeiters than legitimate businesses. Prior launches of new gTLDs – where companies spent significant money challenging cybersquatters and registering domain names solely for defensive purposes - have indicated this may very well be true.

As we move toward a new era in the development and utilization of the Internet, online enforcement programs will have to evolve to address new issues and risks. Fortunately, ICANN’s Applicant Guidebook includes several rights protection mechanisms (RPM) - including sunrise periods and a Trademark Clearinghouse - that will help IP owners identify potential infringements and enforce their rights in a proactive and cost effective manner. IP owners should start now to revise and enhance their online enforcement strategies, well before ICANN begins accepting applications for new gTLDs. Becoming familiar with the new RPMs is an important step in preventing cybersquatters and infringers from establishing a foothold in the new domain name space. It’s always better to prevent consumer confusion than to remedy it.

Arent Fox has substantial experience and expertise in the areas of online and domain name enforcement. Our team is familiar with the new gTLD system and ICANN’s RPMs and is ready to provide advice and assistance to ensure the new gTLD launch does not expose our clients to unnecessary risk.

Jim Davis
davis.jim@arentfox.com
202.857.6169