Pillsbury Winthrop Shaw Pittman

As new gTLDs near launch, what's happening and how can you protect yourself?

By Bobby Ghajar and Robert B Burlingame

While much of the world is finally getting a handle on the .com, .net and .org domains, we are on the brink of an explosion of hundreds of new generic top-level domains (gTLDs). In fact, if things go as planned, we will soon grow from the 22 current gTLDs to nearly 2,000 gTLDs.

Although exciting and intriguing, particularly in regard to how such gTLDs may change the way in which people use and navigate the internet, the current reality is that the new gTLDs are causing (and will continue to cause) significant expense for trademark owners regardless of whether such owners are participating in, or merely affected by, the new gTLD roll-out. Such expense is also exacerbated by the fact that many companies are unsure about the processes and effectiveness of objecting to new gTLDs or domain names registered thereunder.

ICANN, the organisation in charge of the new gTLD roll-out, accepted applications for new gTLDs from January through May 2012. The application fees were substantial (including an evaluation fee of $185,000 [£115,000] per proposed gTLD) and because the application details were not made public until 13 June 2012 (after the application period had closed) there was a great deal of anxiety and strategising within companies about whether they should suffer the expense of applying for new gTLDs or wait to see (and possibly oppose) what competitors had filed…

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