Trademark owners looking to create a new top-level domain as they expand from the likes of .com or .org to .anything may miss their first chance if they haven't acted by now, lawyers said.
The Internet Corporation for Assigned Names and Numbers (ICANN), a body that sets the Internet's rules, made March 29 the deadline to register as an applicant for a new top-level domain (TLD).
After signing up as an applicant in March, then the company must complete the official application for a TLD name, which includes criminal, financial and technical background checks, by April 12.
But lawyers said a company that hasn't started the process to grab their ".brand" could find it very difficult and costly to finish applications in time. They might need to wait for a second round of applications while defending their brands from being used in the countless number of new domain names.
"If a company had the time and was able to spend every day between now and April 12 to work only on preparing these materials it is possible (to meet the deadline), but it would be a huge gamble," said Michael R. Graham, a partner at Marshall, Gerstein & Borun LLP.
Paul D. McGrady, a partner at Winston & Strawn LLP, said it typically takes three to four months for a TLD applicant to finalize ICANN's detail-heavy application.
"We're almost to the point where it can't be done, but maybe it can be," McGrady said. "It's really decision time."
One time-consuming aspect of the application stems from TLD owners, much unlike standard Web address owners, needing the technical infrastructure to operate this new domain, McGrady said. That capability or an agreement with one of four providers must be proven in the application.
ICANN said 254 users registered to be TLD operators as of March 9. Each registered user may apply for up to 50 ".names." ICANN plans to release the number of .name applications in May.
McGrady said the number of new .names might range from 500 to 700.
Thad Chaloemtiarana, a partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, said many of his clients want to "wait and see" if the new domain system becomes popular.
"The market case for this has yet to be made," Chaloemtiarana said, noting the $185,000 initial application fee "is just the tip of the iceberg" in terms of the cost to run a TLD that some estimate could be "in the millions."
ICANN said there will be more rounds of TLD applications, but it did not reveal when.
Companies that skip Round One take the risk of a TLD being registered that infringes its trademarks, Chaloemtiarana said.
"(There is) certainly going to be a lot of work for (intellectual property) lawyers who manage trademark portfolios to be watching for opportunities to protect their client's brands," Chaloemtiarana said.
Protecting brands with today's limited number of TLDs becomes costly, Chaloemtiarana said.
"And then you start multiplying it by potentially an unlimited number of (TLDs) and you can see why there has been some concern," he said.
Mary M. Squyres, a partner at Brinks, Hofer, Gilson & Lione, said a trademark dispute "can be like a mini-lawsuit" and cost companies up to $200,000.
"Many trademark practitioners feel the objection processes are not strong enough or put too much of a burden on the current trademark owners to police all this," Squyres said, adding that those concerns don't outweigh the benefits of an expanded Internet.
The new system comes with ways for companies to protect themselves, such as a trademark clearinghouse that alerts registered brand owners of a potentially infringing domain name application, said Graham of Marshall, Gerstein & Borun.
"Companies are looking at what protections they want to have and they probably should have someone on the ground to watch this process to see if it's worth them getting involved in the second round," he said.