ICANN will begin accepting applications for new generic top-level domains (gTLDs) starting January 12, 2012, allowing for an unlimited number of new suffixes beyond the existing ones like .com and .org. This change may affect all businesses that use the internet for e-commerce or marketing. It will allow companies to purchase domain names that match their brands and products. While this opens new opportunities, it also risks brand dilution and consumer confusion if not properly managed. Companies should consider applying for their own gTLD or monitoring new domains to protect their trademarks.

1. December 13, 2011 ICANN’s gTLD Expansion Plan About to Launch: All Businesses
and Trademark Owners Should Take Note
TechComm and IP Client Alert
What many are calling a “revolutionary change” in Internet domain names is coming in
This Alert provides only January 2012. This change may well affect every business and organization that
general information and engages in e-commerce or Internet marketing – which means, virtually everyone.
should not be relied upon as
Starting January 12 through April 12, 2012, ICANN – the Internet Corporation for
legal advice. This Alert may Assigned Names and Numbers – will accept applications for generic top-level domain
be considered attorney names (gTLDs). With this transition, no longer will Top-Level Domains be confined to
advertising under court and “.com”, “.org,” “.net” or the handful of other currently existing TLDs.
bar rules in certain
The Internet will be open for gTLDs consisting of business and product names (such as
jurisdictions.
“dot-Coke,” “dot-Kleenex”), industry names (“dot-bank,” “dot-shoes”), special-interest
names (“dot-SaveTheBay”) and endless other possibilities. In essence, the owner of a
For more information, contact new gTLD will control its own significant “domain” in the Internet. All major businesses
your Patton Boggs LLP and associations should be aware of the new gTLD process and its benefits and risks.
attorney or the authors listed
Owners of the new gTLDs will be able to make access to the domain names using that
below.
gTLD exclusive (for instance, to the owner’s company or customers), or non-exclusive
(for instance, open to anyone who wants to have a domain name ending in “dot-golf”).
Mark Ellison This scenario will enable companies to provide customers with a completely branded
mellison@pattonboggs.com online experience. It may also provide advantages in search engine results and improve
navigation traffic when the gTLD is well-publicized. For example, instead of just owning
Deborah Lodge
dlodge@pattonboggs.com
“Ford.com,” the company could offer and control “www.Trucks.Ford,” or Sears could own
“dot-Kenmore,” “dot-Craftsman,” or possibly even a generic term such as “dot-
Jennifer Richter appliances.”
jrichter@pattonboggs.com
Nicholas Allard Such promising opportunities also bring business risks. Brand/trademark enforcement
nallard@pattonboggs.com will be an issue, as well as online fraud, counterfeiting/piracy and other criminal behavior.
The thousands of new domain name variables may lead to consumer confusion and
brand dilution. Complications in navigation and search engines may also pose
WWW.PATTONBOGGS.COM
challenges. The gTLD application process includes an objection phase in which
trademark owners can object to applicants whose chosen gTLD infringes trademark or
other legal rights.
Even if a company decides to forego acquiring a personalized corporate domain name, a
brand owner will need to stay abreast of new gTLDs. Those who fail to be on alert risk
losing Web traffic and possibly having customers diverted to competitive – and perhaps
fraudulent – websites. Increased cybersquatting (securing and holding domain names
hostage in hopes of selling them to legitimate owners or users) – may also be a
challenge.

2. The Senate and House are holding hearings in December to address these concerns. On
December 8, 2011, the Senate Committee on Commerce, Science, and Transportation
heard from national and international companies, advertisers and nonprofit organizations,
which all questioned the wisdom of the gTLD plan. However, there is little that Congress
can do at this time to halt or modify the ICANN process. Airing these concerns hopefully
will result in greater scrutiny of the bona fides of gTLD applicants and their systems.
Obtaining a gTLD will not be an impulse purchase. The ICANN application fee is
$185,000, plus legal and technical fees. The application guidebook runs over 300 pages.
Annual fees and maintenance costs will also be significant. As part of the review process,
ICANN will seek to ensure that applicants have sufficient financial and technical depth
(directly or through contractors) to operate and maintain an Internet Domain registry
(such as the one operated by Verisign for the dot-com TLD.)
Businesses and nonprofit organizations need to consider whether to file an application for
a gTLD – now – before the January 12 application window opens. While the new
program will not be suitable for every organization, at the very least, organizations should
monitor the new gTLDs in order to remain competitive and protect their respective
trademark “domains.”
Trademark owners will also be able to register their trademarks with the ICANN
“Trademark Clearinghouse.” Entities granted gTLDs must screen potential domain
names against the marks listed in the Trademark Clearinghouse to guard against
infringements. The Trademark Clearinghouse also will send a notice to trademark owners
whose trademarks are enrolled in the Clearinghouse Database if someone applies for a
domain name using one of their marks. We will issue another Client Alert after ICANN
establishes the Trademark Clearinghouse procedures, which will provide trademark
owners with the opportunity to obtain additional protection for their brands.
Patton Boggs is working with clients on many aspects of the new gTLD system, including
assisting with the gTLD applications process and helping clients establish more robust
policing and enforcement measures to preserve the integrity of their trademarks and
brands.
Please contact us if you have any questions or would like to discuss this new Internet
Domain system and its many implications.
This Alert provides only general information and should not be relied upon as legal advice. This Alert may
also be considered attorney advertising under court and bar rules in certain jurisdictions.
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