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Internet expansion to create opportunities, concerns for brand owners

McAfee & Taft tIPsheet - July 2012

The Internet is expanding again, creating new concerns for trademark owners. In addition to the 22 presently existing generic top-level domains (e.g., .com, .org, .edu, etc.), the naming authority for the Internet, ICANN, has decided to permit applicants to specify their own top-level domain names.

On June 13, 2012, ICANN published the list of applicants and the prospective domain names. While some companies utilized a .[brand] naming strategy, including the American Automobile Association (.AAA), the National Football League (.NFL), and Nike, Inc. (.NIKE), other applicants have selected generic words, including (.CHURCH), (.SPORTS), and (.NEWS). Once finally approved, any or all of these generic top-level domains (gTLDs) may be in use as early as March of 2013. Although the application window is now closed, more than 1,900 applicants paid the non-refundable $185,000 application fee to take advantage of the prospect of choosing a new Internet gTLD.

Trademark owners should be on alert for brand opportunities and risks. For example, the gTLD (.GAMES) is likely to issue. By way of example, the domain HUNGER.GAMES may be of particular interest to the rights owners of the currently popular movie of the same title.

We encourage brand owners to review the list of gTLDs involving marketing, sales, information systems administration and trademark counsel perspectives. Many of the new gTLD owners are likely to open their gTLDs to the public. An early application and monitoring strategy will help brand owners secure desired domains and prevent the more problematic uses. If a domain name problem arises under a new gTLD, various dispute resolution mechanisms have been set forth by ICANN. Please feel free to contact us to obtain more information.