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Wiley Rein's David Weslow Comments on ICANN's Expansion of Web Domain Names

Internet Retailer
June 21, 2011

David E. Weslow, a partner in Wiley Rein's Intellectual Property Practice, discussed with Internet Retailer ICANN's recent vote to allow organizations to purchase top-level domain names besides those currently used (.com, .net, etc.).  The new program by ICANN, which oversees the Internet domain name system, will allow organizations to personalize their website addresses as an extension of their name or brand, but, as Weslow told the publisher, there also are costs and potential consumer protection issues that retailers and consumer goods manufacturers will now be forced to address.  

The new domain name registries will be expensive.  Beyond the application fee of $185,000, Weslow estimated that the cost of obtaining and launching a closed domain registry for a single company, such as .brandname, would likely be at least $350,000, while the cost would be greater still for a generic or geographic name such as .camera or .NYC that would then be selling "sub" or "second-level" domains to many other entities, such as hotel.NYC. 

Given the potential explosion in available domain names, organizations of all sizes should develop and/or revisit their strategy for Internet brand protection-including deciding in advance whether or not to preemptively register their names as sub-domains in certain of the new domain extensions.  Weslow said that, "For other than the largest companies it's not going to be practical to defensively register across all new registries," noting that  companies will need to set priorities, anticipating both consumer behavior and likely behavior by Internet based scam artists.

While ICANN has created mechanisms through which trademark owners can seek to prevent issuance to unaffiliated parties of new domain registries that correspond to their trademarks, a potential issue could surface when companies with similar brand names request the same domain registry extension.  In that situation, the company willing to spend the most would win the name, Weslow noted.

ICANN will begin accepting applications for new top-level domains in January 2012, and expects to receive around 500 applications.  Because the organization has not yet said when it will reopen applications after this first round, Weslow told Internet Retailer that some large organizations may feel the need to apply now lest they get shut out of attractive domains for several years.

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