At its June 20, 2011, board meeting in Singapore, the directors of the Internet Corporation for Assigned Names and Numbers (ICANN) voted to approve the Applicant Guidebook. This decision sets in motion a rapid and unprecedented expansion of the number of generic Top-Level Domains (gTLDs).

Prior to approval of the new program, gTLDs, which are the letter strings following the “dot” in an Internet address (e.g., the “com” in .com), were limited to 21 specific sequences, such as .com, .biz, and .mobi. While registrants were free to register almost any sequence prior to the gTLD, known as a second-level domain, registrants had few options when choosing a gTLD. With ICANN’s approval of the new program, the Top-Level Domain Name space has been opened to allow the registration of nearly any combination of letters, including brands or other terms, such as .bank, .lawyer or .chicago.

According to ICANN, the expansion will allow for a greater degree of innovation and choice. While the full impact of this expansion is uncertain, it is clear that regardless of their intent to participate in the new program, brand owners will need to reevaluate the way they currently monitor and enforce their brands on the Internet. 

In addition to detailing the necessary procedures for registering a new gTLD, the Applicant Guidebook contains several trademark “Right Protection Mechanisms” that were developed in consultation with trademark owners and their representatives. These protections include a sunrise period, a formal process for objecting to new gTLD applications and a trademark clearinghouse meant to notify brand owners of infringing domain name applications. In order to receive the full benefits of these protections, however, brand owners must take specific steps to have their marks validated and entered prior to the launch of new gTLDs.

The Applicant Guidebook also limits the number of new gTLD applications that ICANN will delegate into the Internet in any given year and sets a limited application window that will open on January 12, 2012 and close April 12, 2012. While ICANN anticipates that additional application rounds will follow this limited application period, there is no guarantee that this will occur. As a result, brand owners interested in participating in the new gTLD program need to prepare in advance to ensure that they are not excluded from the application process altogether. 

To receive a copy of Mayer Brown’s full article on this topic, or for more information regarding the Applicant Guidebook or any other matter raised in this Legal Update, please contact Michael D. Adams at +1 312 701 8713 or Richard M. Assmus at +1 312 701 8623.

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