On May 30, after years of debate and dialogue with the Internet community, IP owners, governments, and others, the Internet Corporation of Assigned Names and Numbers (ICANN) released the – presumably – final Applicant Guidebook concerning the proposed launch of new generic Top Level Domains (gTLDs). There currently are 22 gTLDs (e.g., “.com,” “.net,” “.org,” etc.). Under ICANN’s proposal, corporations, organizations, and institutions in good standing will have the opportunity to apply for their own gTLDs, which they will administer pursuant to certain rules and regulations.

ICANN’s Board of Directors will consider approval of the new gTLD program at a meeting in Singapore on June 20, 2011. If, as expected, the Board approves the program, ICANN could start accepting applications for new gTLDs as early as the fourth quarter of 2011. The new gTLDs could therefore be active in 2012. It is expected that ICANN may 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 within the existing 22 gTLDs.

If approved, the program will create opportunities for IP owners who may want to register their own gTLDs to enhance their brand and consolidate their Web presence under a “.YourBrand” domain name. IP owners also will be able to register new domain names under a third party’s gTLD, e.g., “YourBrand.NewgTLD.”

However, many in the IP community are justifiably concerned that the new gTLD program will create substantial opportunities for cybersquatters, counterfeiters, and others to cause confusion in the marketplace by registering new domain names that infringe third party trademarks. To combat these potential problems, IP owners must be vigilant in their online enforcement efforts. The Applicant Guidebook includes several IP rights protection mechanisms - including sunrise periods and a Trademark Clearinghouse - that will help IP owners identify potential infringements and enforce their rights. Being familiar with and taking advantage of these rights protection mechanisms will be a critical component of a successful IP enforcement program in the new gTLD space.

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. The new gTLD program will no doubt put pressure on corporate budgets and already-overworked employees, but these demands cannot be an excuse for doing nothing. IP owners should strive to have revised and enhanced online enforcement strategies in place before ICANN begins accepting applications for new gTLDs. As prior launches of new gTLDs have taught everyone, being proactive is a much more effective and efficient enforcement policy than waiting until the cybersquatters and infringers have established a foothold in a 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 program and is ready to provide advice and assistance to ensure the new gTLD launch does not expose our clients to unnecessary risk.

To learn more about the new gTLD program and how you can protect your brand in this new space, contact:

Jim Davis
davis.jim@arentfox.com
202.857.6169