Internet, ICANN, and Domain Name

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The current web environment of 22 generic top-level domains (gTLDs), such as .com, .net, .org, and .jobs, is expanding, presenting businesses everywhere with both serious and immediate concerns, as well as significant opportunities. The Internet Corporation for Assigned Names and Numbers (ICANN) – the entity established to oversee operation of the Internet – has created a new gTLD program that is ushering in well in excess of 1,000 new gTLDs, which began in the fall of 2013. In addition to triggering massive consumer confusion, the new gTLD program will likely spawn brand fraud, especially for companies that do not have brand protection plans in place.

Reed Smith lawyers have considerable experience in this area and have been on the front lines, guiding clients through the gTLD landscape, whether they have applied for brand-related or generic TLDs, are looking at marketing opportunities, or are seeking to protect their brands and marks from infringement and dilution. We have also participated in ICANN’s multistakeholder process, attended meetings with decision-makers of ICANN, and served on working groups, drafting teams and committees to help formulate protection mechanisms for trademark holders in the new system. Whether you are a brandowner or applicant, we can help with the wide range of issues pertaining to the launch and the world of the new gTLDs, including:

  • Developing a brand-protection strategy, including deciding which marks to register in the Trademark Clearinghouse, which to register as domain names in various early “Sunrise” periods, and how to respond to Trademark Claims notices, as well as how to police and enforce your brand in the new gTLDs
  • Maximizing opportunities the new gTLDs offer to acquire desirable domain names, structuring your marketing approach to take advantage of particular new gTLDs, and positioning your brand in generic TLDs
  • Positioning you or your company to be awarded the gTLD(s) for which you have applied, and subsequently assisting with ICANN registry contracts and vendor agreements
  • Complying with the new gTLD rules and relevant competition laws if you will be operating an open generic TLD
  • Becoming a registrar and monitoring your compliance
  • Navigating multiple new dispute-resolution procedures (e.g., post-delegation DRP, Sunrise DRP, Public Interest Commitment DRP), whether you are operating a gTLD, are a registrar or a domain name owner, or need to assert a claim to protect your brands or marks
  • Litigating or defending on your behalf, if that should ever become necessary

Whether you believe the new gTLDs have the potential to work for you or whether you need to cope with the new legal environment it will bring, our lawyers can help you plan an appropriate strategy to best find your way in the "brand" new world that is upon us.