David Weslow Comments on ICANN's gTLD Program and the Future of Brand Protection

David Weslow, a partner in Wiley Rein's Intellectual Property Practice, was interviewed by Financial Times' Policy and Regulatory Report, Intellectual Asset Management, Internet Retailer and World Trademark Review after the international body overseeing Internet addresses unveiled the nearly 2,000 applications it received for new generic top-level domain names (gTLD).  The release date has coincided with a great deal of inaccurate information circulating about the program and the new ".anything and .everything" web addresses.

Mr. Weslow told Policy and Regulatory Report that companies will need more targeted online brand protection and anti-fraud programs to combat a possible increase in "bad faith" actors following the Internet Corporation for Assigned Names and Numbers (ICANN) announcement for gTLDs, which include applications ranging from .bank to  .data and .movie.

"The gTLD program has the potential to significantly alter the Internet landscape," Mr. Weslow said.  "There is also the potential for misuse of the new domain names."

The article reported that "corporations already are inundated with domain name misuse with only 22 top level domains such as .com and .org and more than 200 country code domains."  As a result, Mr. Weslow said that companies will need to implement protocols to prioritize potential violations and take action where there is a clear threat to customers.

Mr. Weslow told Internet Retailer that retailers that don't want to risk losing out on a domain space should look at the list of applicants to see if competitors have applied for any extensions that could hurt their own businesses.  "Your ability to engage in dialogue with that company is limited, maybe a few months," Mr. Weslow said.

With the process one step closer to completion, Mr. Weslow told World Trademark Review that companies will have to pay even greater attention: "Taking into account the number of strings for which there are multiple applications, we may see over 1400 '.generic' or '.category' gTLDs go live over the next few years. This number is a good deal higher than what was anticipated as recently as a few years ago, though astute ICANN observers likely noticed significant increased interest in the gTLD program over the last six months. Considering that there are currently around 350 million websites on the internet using the existing 274 TLDs (22 gTLDs and 252 ccTLDs), the gTLD program will very likely result in a game-changing expansion of the internet. With 101 applications by Google, 76 by Amazon and multiple applications by other consumer-facing companies such as Dish Networks, General Motors, Microsoft and others, the list of published applications suggests that a wide breadth of marketing resources will be committed to promotion of the new gTLDs. Therefore, trademark owners of all sizes will need to evaluate the potential impact of the new gTLDs on online branding and brand protection programs."