The Time Is Now To Prepare For ICANN's New Top-Level Domain Names

Companies Must Plan for the Internet’s New Top-Level Domain Names

Companies that want to take advantage of the forthcoming top-level domain name system need to start planning and budgeting for it now, because the Internet Corporation for Assigned Names and Numbers (ICANN) is set to launch the system and “can pull the switch at any moment,” said Attorney Paul D. McGrady Jr. of Greenberg Traurig.

McGrady, who specializes in technology, media and communications law and is the author of McGrady on Domain Names, told LexisNexis that ICANN is in the final stages of launching the new extensions. “Dot com is not going away. It’s just a new opportunity for additional domain names,” he said. “And some of those domains will be brands, because it’s open to everybody, even brands. So, for example, there may be, in a few years from now, a .Coke or a .Pepsi,” he said.

He said these domains will raise important branding and marketing decisions for companies as well as important legal consequences. “[ICANN] is not going to allow top-level domain names that are confusingly similar to one another. So if you have a brand that’s very close to somebody’s else’s brand, even though in your mind the brands are distinct, ICANN’s examination experts may not find them to be very distinct from each other,” McGrady said.

“For example, UPS and UBS are very close. And it’s not quite clear at this stage whether or not the ICANN examiners are going to allow those two marks to coexist in top-level domain names,” he said.

He said that companies that share marks have further reason to be concerned. The name “Delta,” for example, is owned by two prominent companies, Delta Faucets and Delta® Airlines. “So in that situation there can only be one .Delta,” he said. “And so there are issues even before the application process starts.”

Once the process is approved, McGrady said there will be a four-month communication window during which ICANN will inform companies of the procedures, followed by a three-month application window.  “We’re talking about something that could happen in the next eight months, and so the planning stages and the budgeting stages really are upon us now,” he said.

“It’s very exciting in some respects because the Internet is expanding. It’s a great way for brands to express themselves on the Internet. It’s very troubling from some aspects because unlike registering a dot com through GoDaddy.com®, this is not a $15 deal. This is a big expense. ICANN’s application fee alone is $185,000 to do this,” he said.

McGrady said there will not be a “horse race” among companies seeking to register new domain names because the application process has a three-month application period and there is no benefit to being the first to apply. Those applications that are the same or similar will go into what ICANN calls a “contention set” while the issues are resolved. “Ultimately if the contention can’t be resolved, then they will go to auction and whoever wants the top-level domain name the most will have to pay ICANN quite a bit of money to outbid the other guy,” McGrady said.

He suggested that companies that might face contention for their desired domain name should address and plan for those issues up front.