On June 13, 2012, the Internet Corporation for Assigned Names and Numbers (“ICANN”) – the nonprofit corporation that is responsible for managing critical parts of the Internet infrastructure – publicly released a listing of approximately 1,900 new generic top-level domain names (“gTLDs”) that may be approved for use as early as March 2013. Every retailer that utilizes the Internet should review this listing and consider whether it must take action to protect itself from this dramatic expansion of gTLDs.
The Domain Name System helps Internet users to navigate the Internet. Every domain name ends with a gTLD, such as “.com” or “.org.” There currently are only twenty-two such gTLDs. But this limited universe of gTLDs is set for dramatic expansion.
ICANN has instituted a new and controversial policy that liberalizes the gTLD approval process and will result in a significant expansion of the number of gTLDs in use. Under this new program, entrepreneurs, businesses, governments, and communities around the world were offered the opportunity to apply to establish a new gTLD of their own choosing. Thus, the community of stamp collectors could obtain approval for “.stampcollecting.” Or, the Widget Corporation could obtain approval for a new gTLD, “.widget.” By the May 30, 2012 deadline, ICANN had received applications for more than 1,900 new gTLDs.
Whether or not a retailer applied for a new gTLD, it must pay close attention to the newly released listing of applied-for gTLDs for two reasons. First, an applied-for gTLD may be identical to or confusingly similar to its own trade name or one of its trade marks. Second, an applied-for gTLD that reflects a generic term, such as “.shoes,” may pose a competitive threat to its business. If a retailer is concerned about an applied-for gTLD, there are avenues available to obtain relief. These applications for new gTLDs will not automatically be approved by ICANN. They will be subject to a rigorous review process that will afford concerned retailers opportunities to stop an application, but they must act expeditiously. Advice from experienced counsel will help retailers navigate these issues. At the link is an analysis I prepared of the issues and steps retailers can take to protect their interests. You can also find the list of gTLDs and other information at the ICANN website.