Expansion of Generic Top-Level Domains Has Branding and Trademark Significance

Internet users are very familiar, of course, with ".com," ".org," and ".net." These are examples of some of the existing generic top-level domains ("gTLDs"). There are now only twenty-two of these gTLDs available. However, a recent decision by the Internet Corporation for Assigned Names and Numbers ("ICANN") provides that starting from January of 2012, domain registers will essentially have unlimited access to all the words in the English language, as well as access to virtually any type of character when choosing a domain name. For example, your business name could serve as a new gTLD.

Although it may seem like just about anyone can apply for a new domain name, this is not the case with these expanded domain names. Not only does the registration process include a complicated 200-page application, but it also comes with a hefty price tag. Applying for a new gTLD alone will cost $185,000; this does not even include the additional $25,000 yearly fee. The procedures will include measures to protect trademark rights.

The existence of essentially an unlimited number of domain names has important implications for business recognition and branding. For a large business, the expansion means an opportunity to reinforce one's brand name. For a small business, the expansion means the ability to pick domain names that are no longer "available" at the dotcom level. This translates into an opportunity to enhance business recognition.

It is important to remember, however, that if businesses fail to register as many domain names as possible that "match their brands," they may fall victim to competitors who will try to lure customers away from their site. Such pressure to protect their brands may cause businesses to unnecessarily register too many domain names.

Our Chicago business attorneys advise you to decide if, based on the expense and burden, application for a gTLD is a feasible option. If it is, you should anticipate and prepare responses to potential competitors and/or third-party gTLD applicants.

Our Chicago Interent lawyers can help you assess the merits of pursuing a new gTLD. For instance, there are uncertainties currently surrounding the issue. It is not clear how ICANN will handle two companies that apply for the same gTLD. And, business owners should keep in mind the benefits of registrations to prevent cybersquatters from obtaining control of a desirable domain name. Although it is not feasible to register every possible important term, it is important to consider the most common ones.

This post was prepared by summer research assistant Yelena R. Please contact us to discuss this or any other Internet or other information technology law matter.