By Paul D.
McGrady, Jr., Shareholder, Greenberg Traurig / Author, McGrady on Domain Names
Well, there's not going to be a horse race because
there's a three-month application window and there is, at least the way the
applicant guide book is written today, no benefit to being the first
application in. You just have to have it
in within the window. So if there are
two applications for identical marks or for confusingly similar marks, they
will go into what's called a "contention set". Any domain names that are confusingly
similar to them will unfortunately be held up while that contention is
resolved. Ultimately if the contention
can't be resolved, then it will go to auction.
And so whoever wants the top level domain name the most will have to pay
ICANN quite a bit of money to outbid the other guy.
There's also this issue of the community
application. If someone has a community
that they believe that they represent, they can also file for a corresponding
top level domain name. Even if it is a
brand, if they qualify in a community analysis, their application can actually
trump a brand.
So say for example, somebody puts together a community of
people who live in the Mississippi Delta and they want to be
"dot-Delta". If they're able
to convince ICANN that they in fact represent a community that can be
identified, that the overwhelming majority of the community believes they
represent them and they back the application, they can in fact be in a trump
position in relationship to the other applications.
I use the "dot-Delta" example as a community
application sort of facetiously as there is no Delta community that I know of.
But it's an example of a problem that may occur depending on the nature of your
mark. I expect of the entire process,
because of the trump position, there will be gaming at the community-based
So there are some nuances to all this; it's not just
first to file. And there are some things
that need to be done on the front end.
So for example, how do you set up the company? Who will serve as the registry is important
because if there's no way to make that a joint venture, if there's no stock
sharing, and there's no ability to bring somebody in who otherwise will be
locked into an auction with you, then you're in a situation where someone has
to lose and someone has to win.
But if there's a way to use that company structure to make
a friend, and everybody can share a top level domain name, you can delineate
what you want at the second level - that
area on the left hand side of the dot.
For example, one party will register "faucets.delta" and the
other registers "airline.delta". If you can do those things and work out happy
compromises then great. But if you don't
do the correct planning up front it's going to be harder to get there in the
event both applications go in.
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