With the expansion of possible top level domains in 2012, so that your company can be found on the Internet at AcmeProducts.com as well as at Products.ACME, does it really matter at this point? ICANN (the Internet Company for Assigned Names and Numbers, the official governing body of internet domain names and domain registries and registrars) finally approved the expansion of generic top level domains (“gTLD”s) and allows for an unlimited number of new top level domains beyond the several that we are most familiar with (primarily .com. net and .org), the country-associated top level domains (.us or .ca for Canada) and the assorted additional top level domains approved by ICANN several years back but that have had perhaps only limited success (.biz, .travel, .jobs). So we may finally see a world of myriad custom domain name possibilities – such as companies using their brand names as the top level domain. You may be instructed to send an email to email@example.com for questions about your cable bill or to firstname.lastname@example.org for a new insurance quote.
On May 30 2012 ICANN released its latest iteration of its “gTLD Applicant Guidebook”, which sets out the procedures and anticipated timelines. This launched an important period of time when brand owners must consider whether to make the hefty investment and commitment involved in securing a brand-based top level domain (the aforementioned .ACME, for example). The cost is substantial: applying for and securing a brand-based top level domain will require payment of a $185,000 registration fee; and ICANN imposed a 10 year commitment on approved applicants.
Even if a company chooses not to apply for a new gTLD, trademark owners are being advised to pay attention to and participate in the new trademark clearinghouse and sunrise provisions. The clearinghouse will require new domain name registries to provide trademark claims services to mark owners during an initial launch period. The sunrise provisions provide for notice to a trademark owner, who has submitted a mark to the clearinghouse, in advance of processing a new registration for a domain matching the trademark. At the very least, this represents a new set of trademark protection measures that brand owners must start adopting.
Many of us have watched with waning attention over the past couple of years as the new world of many more top level domains was threatened, previewed, announced, promised, and delayed, delayed, delayed. Along the way, there was excitement as well as a lot of concern or even fright about the seemingly unmanageable future in which only the behemoth businesses among us would be able to allocate the resources required to secure and manage multiple domains. With the final launch of the new GTLDs, it may be less of a scramble to assemble multiple new domains and more of an added compliance burden for large trademark portfolio managers.