The Great Internet Land Rush

For most of the time since the Internet as we know it was commercialized in the mid-1990s, it has been carefully curated. First by the United States Department of Defense, then the United States Department of Commerce (DOC), and now by the International Corporation for Assigned Names and Numbers (ICANN) which, based in California, has a contract with the DOC concerning its administration of the Internet.

Over the years there have been sparse additions to the Top Level Registry (.com, .net, .info) other than a handful of new registries for niche areas like .museum, .mobi (mobile) or .aero. That's all about to change with the creation of over one thousand new gTLDs. The new gTLD program will usher in a fundamental change to the Internet where users will now be able to own entire registries instead of just small pieces of already established registries, like the .com registry. Thinking about this in spatial terms, there will be a huge horizontal increase in the size of the Internet.

Is This a Good Idea?

Most IP attorneys would tell you that it will definitely be good for business, but bad for their clients. From ICANN's perspective, this is a natural extension of its mandate to create a truly “international” Internet that is not just the reflection of a few stakeholders ' i.e., the United States. Sec. 2(4) of the ICANN Bylaws states:

“In performing its mission, the following core values should guide the decisions and actions of ICANN: ['] 4. Seeking and supporting broad, informed participation reflecting the functional, geographic, and cultural diversity of the Internet at all levels of policy development and decision-making.”

The “core value” noted above cuts to the heart of the upcoming Internet expansion and new gTLD program that ICANN started almost a decade ago. Specifically, ICANN sees its mission to ensure that the Internet reflects stakeholders from all over the world, and not just North America and Europe. This sentiment was articulated by former ICANN CEO Rod Beckstrom who commented in 2010 at an ICANN Meeting in Brussels, that:

“ICANN today, ['] is a multinational institution working for the common good: a stable, secure and unified global Internet. And it is a multi-stakeholder work in progress, overseen by the world, for the world, reflecting its diverse international staff, board of directors and leadership of supporting organizations, as well as the increasingly global nature of its work. Our relationship with the U.S. government echoes this. Our close cooperation continues but within a broader international context.”

In a 2010 interview with WIRED magazine, Mr. Beckstrom also noted that, from ICANN's perspective, it was “['] offensive to be told you have to change your language to use the [I]nternet” and that the enlargement of the Top Level Registry to include all languages/terms would spur innovation throughout the Internet.

Will It Spur Innovation Throughout the Internet?

Many general counsels for large multinational corporations don't think so, and have been staunchly opposed to the new gTLD program from Day One. Why? Well, for most recognized companies protecting their name and brands online is an increasingly difficult, frustrating and expensive proposition. In fact, the Association for National Advertisers (ANA) put together a sub-organization called the Coalition for Responsible Internet Domain Oversight (CRIDO) in 2011 that was solely “committed to aggressively fighting ICANN's proposed program, citing its deeply flawed justification, excessive cost and harm to brand owners, likelihood of predatory cyber harm to consumers and failure to act in the public interest, a core requirement of its commitment to the U.S. Department of Commerce.”

Even in the face of this entrenched opposition, ICANN has pushed the new gTLD program forward, to the point now where it was announced last month that ICANN believes the first approved new gTLDs (likely non-controversial foreign language registries) will go online in late August 2013.

Many of the companies that were spending time and energy fighting to stop the program have jumped on board, unifying efforts between their marketing and legal teams to make sure that they take advantage of the opportunity (in some cases) to reach consumers and/or users through a dedicated gTLD such as .GOOGLE, .YAHOO, and .APPLE. At the same time these companies should also be making sure they understand that the generic landscape of new gTLDs will also provide numerous opportunities to secure domains in spaces that can be linked to the company and/or entity in positive ways ( e.g., www.google.green), and some not so positive ways (think www.google.sucks).

Opportunity and Pitfalls

For attorneys working in this space, there will be an increased premium on making sure that they are familiar with not just the general landscape, but also with the rules and guidelines that are the basis for these new gTLDs, as well as the protection mechanisms that many of the individual owners of the new gtLDs are implementing as part of their obligations to ICANN, and their constituencies. For example, Donuts, Inc. which has applied for well over 200 new gTLDs has touted protections they intend to use across their entire registry space to protect against various forms of IP infringement. Familiarity with these rules will be important for counsel to know in order to deal effectively with registry providers.

Overall, a larger Internet landscape will provide more room, or real estate, for bad actors to operate and a larger area for attorneys and brand managers to watch over in protecting their companies' names and brands. Companies like Oakley, Facebook, Macy's, MySpace, Citibank, Barclays (and the list goes on and on), have dealt with these issues for years. Now they will have to deal with an ever-growing gTLD landscape that is ripe with opportunity and potential pitfalls.

David K. Mitnick is the Founder and President of DomainSkate, LLC, a domain name arbitration dispute facilitator. Prior to starting DomainSkate, Mitnick spent 10 years as an intellectual property lawyer with Amster Rothstein & Ebenstein LLP in New York, working in all phases of intellectual property law including trademark licensing and prosecution, patent and copyright litigation and Internet law. He serves as the Advisory Board Chairman of the Brooklyn Law School Trade Secrets Institute. He can be reached at [email protected].

One in an Occasional Series

In the previous installment, “New GTLDs Law Strategy for Business,” Internet Law & Strategy, June 2013, the author detailed the new global domain names (gTLD) program under which the International Corporation for Assigned Names and Numbers (ICANN) expanded the existing 22 top level domain names (TLDs). This installment looks at the implications of the new gTLD program for attorneys and the Internet as a whole.

The “Internet Land Rush,” which is set to occur tout suite , has no precedent in the short history of the Internet. The comparison to the Great Land Rush of 1893 is particularly appropriate because the fact is that there is a certain lawless or “figure it out as we go” element to the whole thing. Further, land prospectors ' or domainers in this case ' are similarly waiting for the blare of the cannon before rushing headlong to register and/or claim premium real estate in the new Internet space.

For most of the time since the Internet as we know it was commercialized in the mid-1990s, it has been carefully curated. First by the United States Department of Defense, then the United States Department of Commerce (DOC), and now by the International Corporation for Assigned Names and Numbers (ICANN) which, based in California, has a contract with the DOC concerning its administration of the Internet.

Over the years there have been sparse additions to the Top Level Registry (.com, .net, .info) other than a handful of new registries for niche areas like .museum, .mobi (mobile) or .aero. That's all about to change with the creation of over one thousand new gTLDs. The new gTLD program will usher in a fundamental change to the Internet where users will now be able to own entire registries instead of just small pieces of already established registries, like the .com registry. Thinking about this in spatial terms, there will be a huge horizontal increase in the size of the Internet.

Is This a Good Idea?

Most IP attorneys would tell you that it will definitely be good for business, but bad for their clients. From ICANN's perspective, this is a natural extension of its mandate to create a truly “international” Internet that is not just the reflection of a few stakeholders ' i.e., the United States. Sec. 2(4) of the ICANN Bylaws states:

“In performing its mission, the following core values should guide the decisions and actions of ICANN: ['] 4. Seeking and supporting broad, informed participation reflecting the functional, geographic, and cultural diversity of the Internet at all levels of policy development and decision-making.”

The “core value” noted above cuts to the heart of the upcoming Internet expansion and new gTLD program that ICANN started almost a decade ago. Specifically, ICANN sees its mission to ensure that the Internet reflects stakeholders from all over the world, and not just North America and Europe. This sentiment was articulated by former ICANN CEO Rod Beckstrom who commented in 2010 at an ICANN Meeting in Brussels, that:

“ICANN today, ['] is a multinational institution working for the common good: a stable, secure and unified global Internet. And it is a multi-stakeholder work in progress, overseen by the world, for the world, reflecting its diverse international staff, board of directors and leadership of supporting organizations, as well as the increasingly global nature of its work. Our relationship with the U.S. government echoes this. Our close cooperation continues but within a broader international context.”

In a 2010 interview with WIRED magazine, Mr. Beckstrom also noted that, from ICANN's perspective, it was “['] offensive to be told you have to change your language to use the [I]nternet” and that the enlargement of the Top Level Registry to include all languages/terms would spur innovation throughout the Internet.

Will It Spur Innovation Throughout the Internet?

Many general counsels for large multinational corporations don't think so, and have been staunchly opposed to the new gTLD program from Day One. Why? Well, for most recognized companies protecting their name and brands online is an increasingly difficult, frustrating and expensive proposition. In fact, the Association for National Advertisers (ANA) put together a sub-organization called the Coalition for Responsible Internet Domain Oversight (CRIDO) in 2011 that was solely “committed to aggressively fighting ICANN's proposed program, citing its deeply flawed justification, excessive cost and harm to brand owners, likelihood of predatory cyber harm to consumers and failure to act in the public interest, a core requirement of its commitment to the U.S. Department of Commerce.”

Even in the face of this entrenched opposition, ICANN has pushed the new gTLD program forward, to the point now where it was announced last month that ICANN believes the first approved new gTLDs (likely non-controversial foreign language registries) will go online in late August 2013.

Many of the companies that were spending time and energy fighting to stop the program have jumped on board, unifying efforts between their marketing and legal teams to make sure that they take advantage of the opportunity (in some cases) to reach consumers and/or users through a dedicated gTLD such as .GOOGLE, .YAHOO, and .APPLE. At the same time these companies should also be making sure they understand that the generic landscape of new gTLDs will also provide numerous opportunities to secure domains in spaces that can be linked to the company and/or entity in positive ways ( e.g., www.google.green), and some not so positive ways (think www.google.sucks).

Opportunity and Pitfalls

For attorneys working in this space, there will be an increased premium on making sure that they are familiar with not just the general landscape, but also with the rules and guidelines that are the basis for these new gTLDs, as well as the protection mechanisms that many of the individual owners of the new gtLDs are implementing as part of their obligations to ICANN, and their constituencies. For example, Donuts, Inc. which has applied for well over 200 new gTLDs has touted protections they intend to use across their entire registry space to protect against various forms of IP infringement. Familiarity with these rules will be important for counsel to know in order to deal effectively with registry providers.

Overall, a larger Internet landscape will provide more room, or real estate, for bad actors to operate and a larger area for attorneys and brand managers to watch over in protecting their companies' names and brands. Companies like Oakley, Facebook, Macy's, MySpace, Citibank, Barclays (and the list goes on and on), have dealt with these issues for years. Now they will have to deal with an ever-growing gTLD landscape that is ripe with opportunity and potential pitfalls.

David K. Mitnick is the Founder and President of DomainSkate, LLC, a domain name arbitration dispute facilitator. Prior to starting DomainSkate, Mitnick spent 10 years as an intellectual property lawyer with Amster Rothstein & Ebenstein LLP in New York, working in all phases of intellectual property law including trademark licensing and prosecution, patent and copyright litigation and Internet law. He serves as the Advisory Board Chairman of the Brooklyn Law School Trade Secrets Institute. He can be reached at [email protected].