The Board of the Internet Corporation for Assigned Names and Numbers ("ICANN") has recently approved a recommendation that will allow entities to create their own Top-Level Domains ("TLD"). Once implemented, these new TLDs are expected to quickly surpass the 21 currently available TLDs (the most well-known of which is ".com"). This increase in TLDs, however, has serious implications for entities wishing to protect their trademarks, as ICANN currently has no plans to automatically reserve TLDs that may involve an entity’s trademark. While the details are still being worked out, ICANN has instead proposed an objection-based mechanism whereby trademark owners can request the rejection of the TLD application.
Under the current iteration of the new TLD policy, the only way to ensure that a trademark is not acquired by an adverse party is to apply for that trademark as a TLD. The lack of integrated trademark protection in the new procedures will otherwise require that interested entities closely monitor the TLD application process. While monitoring may allow interested parties the opportunity to object to TLD applications at the time of application, it is not clear whether there will be an opportunity to challenge a TLD after it has been approved by ICANN. Indeed, as currently written the Uniform Domain Name Resolution Policy would likely not apply to TLDs, leaving trademark owners with little or no recourse other than a costly court action.
Currently, ICANN applications for new TLDs will only be accepted for a limited time beginning in the second quarter of 2009. Once the initial applications are reviewed, ICANN will then accept applications for additional rounds of review. In the event that two different entities are seeking the same TLD, that TLD will be auctioned off to the highest bidder.
Although the initial recommendation concerning new TLDs has been approved by ICANN, the proper way to implement the recommendation is still to be determined. We will continue to monitor any developments in the implementation of the TLD policy and will update this information as appropriate.