On June 20, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit entity charged with coordinating the Internet Domain Name System across the world, adopted a plan that will significantly alter the Internet’s structure of domain name suffixes-known as generic top-level domains (gTLDs).

Under ICANN’s new plan, the number of gTLDs will increase from the current 22 to a potentially infinite number. Pursuant to this plan, in addition to gTLDs such as .com, .org, and .net, gTLDs may be comprised of any variety of terms in numerous languages including, brand names, geographic locations, community organizations, and keywords. These gTLDs may provide new opportunities for companies wishing to globally market key brands and products, while also controlling a distinct Internet namespace. In fact, ICANN predicts that the new gTLD program will have a significant effect on how consumers search the Internet and how companies develop their online identities.

ICANN will accept applications for up to 500 new gTLDs between January 12, 2012 and April 12, 2012. Additional application periods may be instituted. Applications, reviewed on a first-to-file basis, must contain detailed explanations of an applicant’s ability to establish registry operations and operate a secure and stable gTLD registry in accordance with ICANN’s criteria set forth in the gTLD Applicant Guidebook (May 30, 2011). For each gTLD requested, an applicant must submit an initial application fee of US$185,000.

ICANN will initially evaluate each application for 8 to 18 months, during which it will review and evaluate the applicant’s technical, operational, and security capabilities. ICANN will also compare the applied-for gTLD string to existing top-level domains, reserved names, and other applied-for gTLD strings for possible confusion. Once its initial evaluation is complete, ICANN will publish the application for 60 days in order to receive comments. Although the details of the process are still unknown, during this period, interested third parties must file formal objections to an application with a Dispute Resolution Service Provider (DRSP). There will also be a string contention resolution process to address the situation when two qualified applicants request the same or similar gTLD and cannot come to resolution.

The new gTLD program could provide a company with a unique Internet location for its major brands, thereby expanding a company’s Internet presence and increasing consumer awareness of its brands. This advantage, however, must be balanced against the disadvantages of policing a great number of new gTLDs for infringements as well as the significant costs of the gTLD application process and technical and operational requirements. Therefore, before applying for a new gTLD, companies should form a cross-functional team from their legal, marketing, technology, finance, and product development departments to perform a cost-benefit analysis on acquiring, maintaining, and using a gTLD registry. This team should also consider monitoring the list of filed applications on ICANN’s website as part of the company’s brand protection plan.

ICANN has announced that it will release additional details on the new gTLD program over the next few months. Internet issues and domain name protection are a key component of Dickstein Shapiro’s Intellectual Property Practice and the firm’s trademark attorneys can partner with clients to provide strategic guidance and advice related to the new ICANN gTLD plan, prepare gTLD applications that conform to ICANN guidelines, and assist in the policing efforts of new gTLDs.

For additional information regarding the new gTLD process, please contact the authors of this article, Associate Luna M. Samman at or Partner Philip G. Hampton, II at .



Dickstein Shapiro LLP 2011 Summer Associate Cody Gillians assisted with the preparation of the article.



Intellectual Property