OPENING
STATEMENTS
ICANN Expands Its Domains —By Theodora Blanchfield
Plus: An exclusive interview with ICANN President Paul Twomey
Let the scramble begin. This Multiplying TLDs was one reason
summer The Internet Corpora- for ICANN’s inception in 1998, so the
tion for Assigned Names and decision itself didn’t come as a surprise.
Numbers (ICANN), the non- But the guidelines released by ICANN
profit organization that over- still leave much unknown—including
sees the assignment of IP addresses the cost. (The fee for each new TLD is
and domain names, decided to allow expected to be upward of $100,000.)
up to 5,000 new generic top-level Yet ICANN says the new TLDs could
domains (gTLDs)—the part of an be operational by mid-2009. One of
Internet address after the “dot.” Orga- the few protections for trademark
nizations and businesses will no longer holders is a sunrise period during
be restricted to the 21 existing top- which each TLD will be required to
level domain (TLD) names, such as offer to trademark holders an oppor-.com, .org, .net. Instead, they will be tunity to claim the names they have
able to apply for top-level domain trademarked as well as similar names.
names—known as “strings”— in mul- Some companies are taking a wait-
tiple languages and scripts, whatever and-see approach, saying that it all
is potentially the most valuable to depends on what TLDs are registered.
them in reaching users or consumers. “For example,” says William Schultz,
Organizations could also choose TLDs a trademark attorney at Merchant &
that identify them geographically Gould, “someone could register some-or as members of an interest group: thing you have a trademark for, but
for example, radiocity.nyc, instead of it’s in a completely different field, so
radiocity.com. Country-code TLDs it’s not competition.” He said that he
(for example, .uk or .de) already num- advises his clients to plan on register-ber 250, and are growing separately. ing domains in relevant TLDs and not
Here’s Advice—Direct from ICANN
Karla Valente is director of the new generic top-level domain name (g TLD)
program at the Internet Corporation for Assigned Names and Numbers (ICANN).
She talked with IP Law & Business on how the program, which is still being
refined, is likely to work. Brand owners need to pay attention to these considerations as they develop their online strategies, Valente says.
• Applicants for new TLDs must prove
they have the organizational, operational, technical, and financial capability
to maintain them.
• Each new TLD must have a registry
operator to maintain an authoritative master database of all registered
domain names. Each registry establishes
its own set of rules.
• Applicants should be aware of the rules
of each registry, including “sunrises”—
periods during which brand owners can
register domain names before the pro-
cess opens to the public.
• During an application period, someone
other than the brand owner could claim
the domain name, so brand owners
may want to make sure they get in first,
although there will be an objection
process.
• ICANN will not look at whether the proposed TLD is a trademark in any country
in evaluating TLD applications.
• Nothing prevents a company from
keeping its existing domain name
registration. — Philippa Maister
worry about the other ones.
Some experts think that the entire
expansion will pretty much fizzle.
When was the last time you saw a
.pro Web site? (That g TLD has been
around since 2002.) “I think many
businesses are going to ignore these
new spaces,” says Sarah Deutsch, vice
president and associate general counsel for Verizon Communications Inc.
“Many of the other top-level domains
that have been introduced have failed,
so companies are [less likely] to go in
and register their crown-jewel trademarks,” she says.
Certainly convincing the approximately 1.5 billion Internet users worldwide to alter their behavior online will
be no easy feat. Rob Holmes, founder
and CEO of IPCyberCrime.com LLC,
a company that monitors brands
online, doesn’t think many “legitimate
organizations” will steer away from
.com and is doubtful that consumers
will be willing to change.
There’s certainly a lot of agita among
trademark owners. “Companies have
spent so much trying to develop their
customers’ search habits, buy domain
name portfolios, work on search engine
optimization and on search keywords,”
says Gretchen Olive of Corporation
Service Company, which works with
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