Hundreds of new generic Top Level Domains are about to hit the Internet. What do you need to worry about and how can you take advantage of the opportunity?
As we have previously reported, the Internet Corporation for Assigned Names and Numbers (ICANN) has for the past several years been busy readying a new batch of generic Top Level Domains (gTLDs) to unleash on the Internet community. In recent months, 175 new gTLDs – the cognoscenti just call them “the New G’s” – have successfully negotiated ICANN’s exhaustive review process. Soon we can expect to start seeing new domain names ending in “.SOLUTIONS”, or “.PHOTOS”, or “.FLORIST”, among others.
The New G’s hold considerable promise but we suspect that many readers may not be fully aware of what the future has in store. To take advantage of the opportunities the New G’s present – and also to avoid potential problems – it’s important to know what could be coming down the line and how best to deal with it when, or preferably before, it gets here.
Let’s first look at the two Big Questions, and then delve into some of the underbrush to help you figure out how best to proceed.
The First Big Question: Why should I care about the New G’s?
That’s easy. To take advantage of the opportunities the New G’s afford, and to protect against potential intrusion on your existing trademarks (and related domain names) from similar-sounding new domain names.
The opportunities are obvious. Instead of the ubiquitous and generic “.COM”, the New G’s will include a universe of terms readily identifiable with particular interests, affinities, activities, etc. “.PHOTOGRAPHY” for example, is likely to appeal to professional and amateur photographers, photo processors, camera equipment dealers, photo galleries and others far more than the prosaic “.COM”. As we have reported, “.RADIO”, “.MUSIC” and “.VIDEO” are all under consideration. It’s not hard to imagine desirable and distinctive domain names in each of those domains.
The potential downsides should be equally obvious. If you have established an identity through, say, a registered trademark which you have incorporated into your own domain name (easy example: “CommLawBlog.com”), it’s at least conceivable that somebody else – possibly a competitor – might try to use the same mark in a domain name in one of the new domains. At a minimum that could lead to harmful confusion in the marketplace, if not significant devaluation of your own mark. Given that chilling prospect, you should be worried about what protective steps you can take to defend yourself.
And now the Second Big Question: How can I help myself formulate a domain name strategy?
This, on the other hand, is not so easy.
If you’re thinking about taking advantage of the new opportunities, use your imagination, but get started sooner rather than later. If you can come up with good ideas for one or more domain names now, i.e., before the relevant domains become available to the public, you will be in a better position to register for your new domain name at the earliest possible date and thus have a greater chance of getting it. The longer you wait, the more likely it is that somebody else may get there ahead of you. Once you come up with good ideas, start monitoring the ICANN site (or arrange for somebody else to monitor on your behalf) to keep track of when particular domains are coming online. (More on monitoring below.)
If you’re worried about fending off possible intruders whose use of your mark in their own domain name could be bad news for you, there are a number of steps you might take, all of which require forethought and some vigilance.
To understand the issues, you first need to understand the basics.
What’s a “Domain Name”? Each device accessing the Internet – say, an office network or even an individual computer – has a unique address, just like a telephone number. It’s called an Internet Protocol, or IP, address and, like a phone number, it consists of a string of numbers unique to the computer or network to which it is assigned. Domain names are mnemonic alternatives to numeric IP addresses. After all, what’s easier to remember – www.CommLawBlog.com or something like 64.94.113.120?
Essentially, a domain name consists of two parts. First, a “top level domain”, i.e., the string to the right of the period (e.g., “.COM”, “.ORG”, etc.). Second, a separate identifier string to the left of the period (in the example in the previous paragraph, “CommLawBlog”).
How does the domain name system work? ICANN does not itself issue or authorize domain names. Rather, it manages the domain name system (DNS). For each generic top level domain (gTLD), e.g., .COM, .ORG and .NET, ICANN by contract authorizes a company, known as a registry operator or, more colloquially, just a registry, to set up and maintain the authoritative master database of all domain names registered in that particular top level domain. For example, Verisign is the registry for the “.COM” and “.NET” top level domains.
The registries do not themselves issue or authorize domain names either. That job goes to “registrars”, i.e., companies accredited by ICANN which are permitted to add, delete or modify domain name information in the authoritative databases of one or more gTLDs. Registrars are the companies which interact with the public – if you want to sign up for a particular domain name, you contact a registrar, which checks the relevant database to confirm the availability of the domain name you want. (Obvious example: GoDaddy is the largest registrar in the world.) If that name is available, the registrar adds it to the authoritative gTLD database, and voilà, you’ve got a domain name.
New G’s generally take considerable time to become available. Through a rigorous process that involves proposals from interested members of the public – and at times oppositions or competing proposals from others – ICANN authorizes New G’s to be used in the domain name system. ICANN then formally “delegates” management of the database for each generic top level domain to a registry operator. Within reason, and subject to its contract with ICANN and rules created by the ICANN community, the registry can impose conditions, restrictions, conventions, fees, etc., on domain names within the gTLD(s) it controls. The types of conditions may vary from domain to domain. For example, companies seeking domain names in the “.BANK” domain are likely to be subject to credentialing requirements, while those seeking domain names in such domains as “.EMAIL” or “.GURU” will probably be open for registration.
Why do we need more domains? The New G’s are new domains. Joining the ranks of “.COM”, “.ORG”, “.EDU” will now be hundreds of new domains with more specifically evocative terms, such as ".REPAIR", ".BIKE" and ".CODES". While some may mutter aloud about why we need to bother with all this – hey, aren’t “.COM” and its colleagues enough? – the answer is simple. There is considerable demand for new and different domains to handle new and different domain names. Plus, the world got tired of typing in English. One of the big innovations of the New G’s: top level domains will be available in international scripts. Think “شبكة”(“.WEB” in Arabic), or “онлайн” (“.ONLINE” in Cyrillic), or “世界”(“.WORLD” in Chinese Han). The New G’s cater to the ever expanding global Internet community.
When will the New G’s be available? The process for establishing New G’s has been ongoing for a couple of years already. So far, 175 New G’s have been delegated to registry operators. We will be seeing new domain names in those newly delegated domains shortly. Hundreds more are working their way through ICANN’s processes. Each new domain must go through certain phases in which its availability may be limited to certain potential registrants.
How can I know what New G’s are available and when can I sign up for them? A multi-phase process for making New G’s available has been established. It works like this.
First comes the “Sunrise Period”. In most instances, each of the New G’s will be subject to its own initial “Sunrise Period”. This is a mandatory time (no less than 30 days) during which each New G is publicized on the ICANN website. The idea is to provide anyone with a registered or protected trademark the opportunity to preregister its mark as a domain name associated with a New G. For example, Facebook could seek to register facebook.social in the new ".SOCIAL" gTLD. (Currently, “.SOCIAL”, ".REVIEWS”, “.BOUTIQUE”, “.BARGAINS” and “.NINJA” are in their Sunrise Periods.) Trademark owners should also be aware of the Trademark Clearinghouse (TMCH), a new service provided under contract to ICANN. If you’ve got a nationally or regionally registered trademark (in any jurisdiction), a word mark protected by statute or treaty, or a word mark that has been validated through a court of law or other judicial proceeding, it can be registered with the TMCH. (If you have other forms of trademark, intellectual property or existing domain names you would like to protect, we advise you to contact your attorney for strategies and ideas.)
Then, when new gTLDs are rolled out, parties with marks registered in the TMCH receive access to Sunrise registrations and they are notified of any registrations that happen to match their registered mark. (New G Sunrise Period information is also available at the TMCH website.) Registration with the TMCH is done through licensed agents – trademark holders cannot register their marks directly. A list of licensed agents is available at the TMCH website.
But beware, each New G registry handles conflicts differently, so read the fine print carefully before paying the Sunrise fee. Delta Faucets, Delta Air Lines, delta wind turbines and delta clothing may find themselves competing in an auction to resolve Sunrise conflicts, being chosen on a first-come, first-served basis, or selection based on another registry-chosen process. Plus, Sunrise registrations can be expensive, so pick your domain names carefully and target those important to your industry and geographic area.
Next comes a “Limited Registration Period” – sometimes also called a “Landrush Period” – offered by many New G registry operators. This period, which starts after the Sunrise Period closes, generally makes domain names in a new top level domain available to all, e.g., opening ".BIKE" registrations not only to existing bike shops, but to new ones as well. If you meet whatever conditions are set and are willing, perhaps, to pay a premium fee, you should be able to register a domain name on a first-come,first-served basis. These Limited Registration Periods are short, so if you are interested, watch closely. Limited Registration Periods can be monitored on ICANN’s website (look in the column headed “Other Periods”).
Then, “General Availability” starts! In this phase, a new top level domain is wide open for registration by all qualifying members of the public! We say “qualifying” here because registries may still impose conditions on would-be registrants for names in some domains. For example, to register a domain name in the “.LAWYER” domain, you may need to demonstrate that you are, in fact, a lawyer. For regional domains (e.g., “.NYC” or “.LONDON”), you may need to demonstrate that you are directly associated with the region. But many top level domains – including, e.g., “.MEDIA”, “.TECHNOLOGY” and “.ENTERPRISES” – are expected to be wide open for registration with few, if any, conditions. Each case will depend on the registry’s policies, so be sure to check those out in advance.
Registration prices are set by the registry (so registrations in some domains – think “.CPA” or “.DOCTOR” – may be more expensive than in others, in part for the credentialing process). Also, additional eligibility practices may be imposed in conjunction with ICANN (e.g., “.BANK,” “.CREDITCARD” and “.INSURANCE” will involve strict certifications still under negotiation).
In shopping for a domain name, be aware that not all domains will be offered by all registrars. Registrars in Asia, for example, are more likely to offer the Chinese and Cyrillic New G’s, while those in the U.S. will likely pick and choose what to offer based on the needs of their communities and audiences. If your favorite registrar does not list a New G that you want, check the website of the registry managing the New G you’re interested in. Each registry lists all of the “accredited registrars” who have contracted to offer its New G domain names.
So there you go: Opportunities abound, but dangers lurk. Before it’s too late, trademark holders should carefully consider their options. TMCH registration may be a logical first step. Also, give thought to possibly branching out into other domains – “.RADIO” may be appropriate, or maybe “.CHURCH” or “.TALK” or even “.NYC”. The broad range of New G’s opens up an equally broad range of potential domain names. Once you have identified some possible domains of interest, keep an eye out for their delegations, Sunrise Periods, Landrush Periods and General Availability.
And above all, if you need help, ask for it! The New G world is a complicated place. Information can be found on the ICANN website, with your registrar, and of course with your attorneys. But don’t delay. With 175 New Gs already delegated and hundreds more on the horizon, it is important to map a strategy – to protect existing trademarks and find some new and exciting possibilities in the opening of this new electronic frontier.
