Suppose you were able to purchase and control the section of the Yellow Pages phone book that covers your industry or your city. Suppose that, just like the Yellow Pages, that purchase gave you the ability to control who was able to advertise, what they paid and information about a company’s advertising patterns. Now suppose that control was moved to the Internet — at an exorbitant price.
That is essentially the sale going on now by the Internet Corporation for Assigned Names and Numbers or ICANN, the entity that oversees the Internet.
Since Jan. 12, a window of opportunity has opened for filing an application to purchase the rights to establish and operate a Top Level Domain or TLD. A TLD essentially consists of a registry, a database or index that, like a phone book or rolodex, keeps track of domain names — a string of characters usually in a sequence, such as www.apple.com, www.google.com, etc. and assigns and indexes them against a corresponding sequence of numbers known as the “Internet Protocol” or IP address space (10.101.0.111).
ICANN has been developing the rules and application process for TLDS over the past five years, with input from ICANN’s working groups and trademark rights organizations.
The TLD will essentially allow you to run a registry for a word or string of characters you choose to the right of your dot (.cash) and control the pricing and the terms of admission for customers or registrants who buy the words for a second level domain they rent to the left of your dot (makeme.money). You also control salespeople, known as registrars, who will be responsible for taking orders and signing up customers.
A year from now, we all may be wondering why we didn’t participate in this first Internet rush to secure control over our own TLD registry.
So instead of visiting sites like Apple.com we may go to ipad.apple or mainframe.ibm. In fact, several well-known brands — including Motorola, Deloitte and even Big Blue — have announced they are applying for a new TLD.
Applicants who have chosen to keep their decision private for now will be revealed by ICANN in mid-May. There will also be those who reach beyond their dot (brand) and avail themselves of key industry terms and generic words that may offer control over an entire industry or economic sector such as .doctor, .fund, .car, .music, .movie or .football. Or they could capture entire geographic regions like .Caribbean, .nyc, .alpine, or operate a TLD dedicated to a religion (.muslim, .buddhist) or culture (.latin, .cuban).
The TLD owner could profit, for example, by offering second-level domains on preferential terms to Fortune 500 companies or other notable industry leaders, much like obtaining anchor tenants in a shopping mall.
So against this possible golden opportunity, what is the typical business to do? Should a firm choose to join the TLD frenzy, or at least see what the competition is doing and plan on purchasing a second level domain? Or should businesses wait on the sidelines until the early adopters have made their fortune or lost it?
New TLD applications can be submitted until March 29, 2012. There has been much debate over whether the benefits — such as controlling market share by obtaining a particular key word or generic term for an industry — outweigh the significant costs. Expenses are estimated at anywhere from $500,000 to $1 million, including the $185,000 application fee to ICANN plus legal and other expert fees to complete the application and possible extensions that might be necessary during the nine-to-12 month application evaluation route — after the application process closes.
Control over who is admitted as a registrant, screening applicants for registration and pricing for second-level domain names, opens a new level of creativity both financially and from a marketing standpoint. And remember that even though new top level domain names are being added, traditional domain names (.com, .org) will continue and may be used to supplement or redirect traffic to the TLD. Nonetheless, it is important that owners of a business or trademark follow the successes and failures of what essentially will be an influx of new and possibly novice registry operators
And if you find a competitor who has applied is abusing your market, you can explore methods to object to their pending application.
Keep in mind that the next time this window opens — years from now — there will be a potential ruling elite that may attempt to minimize the number of successful competitor applicants. And like any new business environment, there will always be those who will try to game the system, taking advantage of its weaknesses for illegal profit, presenting challenges that those governing the Internet will have to learn from and deal with. One thing is certain, this learning experience will affect us all.
Scott R. Austin is a partner in the Miami law office of Gordon & Rees LLP and board certified in intellectual property law. He worked for five years on development of the new TLD rules and application process as a member of two ICANN working groups and The New TLD Subcommittee of the International Trademark Association.

















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