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John B.
Farmer

 

Lawrence E. Laubscher, Jr.

 

Ian D. Titley

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What Should Businesses Do Now About the Coming New Domain Names?

Monday, June 25th, 2012

On June 13, the Internet Corporation for Assigned Names and Numbers (“ICANN”) revealed the applications for new generic top-level domain names (“gTLD’s in net-speak). Businesses should plan now for the threats they pose.

A gTLD is the part of the domain name after the last dot, like .com or .org.

ICANN permitted any organization to file an application to operate a new gTLD. 1930 applications were filed for 1429 gTLD’s. The first number is bigger because, in 230 cases, multiple organizations applied to run the same gTLD. There could be auctions to determine who will operate gTLD’s for which there is more than one applicant.

Here are the most popular gTLD applications: .app (13 applications), .inc (12), .home (11), .art (10), .blog (9), .book (.9), .llc (9), .shop (9), .movie (8), and .music (8).

You can review the list of gTLD applications at http://newgtlds.icann.org/en/.

With some new gTLD’s the applicant intends to sell domain names to all comers while, in others, it may limit sales to a closed group or keep the gTLD for its own use. For example, the operator (the winning applicant) of the gTLD .shop could sell the domain name swimming.shop.

Domain names in the first batch of new gTLD’s could go on sale as early as the beginning of 2013. ICANN is supposed to reveal on July 11 the batch of applications it will process first.

Here are some things businesses should consider about this issue.

Most businesses already have a domain name, which they use for their website address and often for their email. In that case, the mission usually will be to not lose online ground to competitors and to preempt cybersquatters from taking your trademark (your business, product and/or service name) in the most popular or relevant new gTLD’s.
Review the applications list to make certain that none of the proposed gTLD’s are confusingly similar to your trademarks. There are ways to file comments or make objections to new gTLD’s, but you have a limited time to do so.
If you have not done so already, register your important trademarks immediately. You will need such registrations to try to get first dibs on domain names that match your trademarks in the new gTLD’s, and to fight off cybersquatters. It takes months to get a trademark registered, so you can’t wait until you need the registrations.
Study the gTLD’s that might relate to your business. For example, I count 14 gTLD applications in the healthcare space, such as for .med, .heath and .doctor. Understand who applied to run them (is it a competitor?) and what rules they intend to implement for running that gTLD. While there are many possible problems, one is that the applicant could restrict who can register domain names in the new gTLD and, thus, favor itself or certain industry players.
You probably should register your important trademarks as domain names in the gTLD’s that relate to your field of business. For example, if you have a physical therapy business called “Acme,” you might want to register Acme.health, Acme.med, and so on, to prevent someone else from using those domain names. It also may be worthwhile to preemptively register domain names in gTLD’s that are generic to business, such as .inc.
Three entities applied to run the gTLD .sucks. That will be a popular space to put up gripe websites, such as Acme.sucks. That’s another space in which you may wish to preemptively register domain names to protect yourself.
If you are willing to not have a .com domain, this presents the opportunity to get a memorable domain name using a new gTLD. You also might be able to get a domain name that identifies you with your industry, such as entertainment, healthcare or law. Still, most people want a domain name that matches their business name, and you will need to have that potential domain name and new business name cleared for usage as a trademark. Just getting a domain name or even incorporating as a business under that name isn’t sufficient.
When contemplating whether to have a non-.com domain name, remember that many people reflexively type email addresses using a .com ending. Consider the privacy risk – that people might send sensitive email intended for your business to the wrong recipient.

It’s going to be a cyber-land grab. Enjoy the prospecting.

By John B. Farmer
Published in the Richmond Times-Dispatch
© 2012 Leading-Edge Law Group, PLC. All rights reserved.