The word "dotcom" has always been synonymous with the internet and domain names. But, despite being the most popular, the .com domain has for a long time been only one of many top level domains, and a new programme from the Internet Corporation for Assigned Names and Numbers (ICANN) will see the number of available top level domains explode well into the hundreds.
With such a dramatic change to the internet landscape, brand owners should all be asking: how to get the most value from their brands with new top level domains; how to prevent others from registering their brands as gTLDs; and how to monitor the hundreds of new domain registries for new subdomains that may be of concern.
What are top level domains?
A top level domain, also known as an extension or a suffix, is a series of characters that make up part of your internet address (.com, .biz, .edu etc).
Over the past few months, ICANN (which effectively co-ordinates internet domains) has been accepting applications to register new generic top level domains (gTLDs). Before ICANN's expansion under the new gTLD programme began, there were around 22 generic top level domans and about 290 specific country code top level domains (.co.nz, .co.uk etc).
It is expected that about 900 entities will apply to register a gTLD in this round. As each entity can apply for up to 49 gTLDs, the number of applications could theoretically be in the thousands.
Under the programme, entities can now apply for almost any word that they want (with a limit of 68 characters). However, the significant cost of an application fee ($US185,000) plus an annual fee ($US25,000) realistically limits the applicants to those fitting within one of two categories:
(1) major corporations (perhaps .google, or .coke) or communities for those with similar interests (eg .paris or .gay), and
(2) entities planning on becoming domain registries by obtaining general words (eg .music, .food, or .football).
Successful applicants could then lease sublevel domains with that specific extension (eg ruapehu.ski, or cardrona.ski), as already occurs with the .com, .org, or .co.nz domains. It is these general domains that are most likely to cause problems for companies trying to protect their valuable brands.
ICANN considers that offering more choice in domain names will increase competition in the domain name market and provide an opportunity for investment. It also gives companies numerous platforms upon which they can build their business, or market their brand.
.application - How can I get one?
ICANN has just closed the first round of applications for the expanded gTLDs. However, it intends to accept further applications at a later date. The first batch of gTLDs is expected to come into operation at the beginning of 2013.
What if someone applies for my brand as a gTLD?
On 1 May 2012, ICANN will formally release the gTLDs that have been successfully applied for.
From this date, third parties can object to the specific gTLDs based on four general grounds.
These grounds are:
(1) legal rights - eg if someone has applied for your brand or trade mark or something confusingly similar (including both registered and unregistered marks);
(2) similar to another gTLD - if the gTLD is confusingly similar to an existing top level domain or to another applied-for gTLD;
(3) contrary to public interest - a third party may find the gTLD offensive, immoral or not in the interests of the public; and
(4) community objection - relates to "community" gTLDs and an objection may be raised if there is substantial opposition from a significant portion of the community to which the gTLD is targeted at.
Any objections to these gTLD applications will be dealt with by a specific independent panel appointed by ICANN, based on the ground under which the objection is raised. These panels will review the objection and decide whether it is a valid claim. For instance, any objections on the basis of the gTLD being similar or identical to a trade mark will be determined by the World Intellectual
Property Organisation (WIPO), which will first attempt to broker a settlement between the applicant and objector, and if unsuccessful, will determine the dispute. Third parties can lodge objections with ICANN or WIPO up until 1 December 2012.
What if someone applies for my brand as a domain under a new gTLD?
Brand owners already face issues with third parties and "squatters" registering domain names that include their brands, and adding hundreds of top level domains will make it even more difficult for entities to monitor and protect their rights. ICANN intends to mitigate these issues by:
(1) Requiring each new gTLD to operate a "sunrise" period for domain name registrations, whichgives trade mark owners the first right to register a domain under that gTLD that matches their trade mark; and
(2) Appointing an independent service provider to operate a database known as a "trade mark Clearinghouse".
The Clearinghouse does not exist yet, but will be in place before new gTLDs start registering domains.
Owners can provide their trade marks to this Clearinghouse, which in turn is required to give that owner notice of an application for a domain name registration that is identical to its recorded mark.
If an infringing domain is applied for, the domain name applicant is also provided with notice of the trade mark owner’s recorded rights. Either party may then act on the information they have been given, including entering the co-ordinated dispute resolution process for that registry.
If a brand owner does not register a domain name during the sunrise period, or use the Clearinghouse, it is still possible to use the existing dispute resolution methods if it later becomes aware of a domain with which it takes issue.
While it is not the end of the dotcom era just yet, web addr are about to get a whole lot more complicated.
Though it will not have an impact on day-to-day internet activity, the new gTLD programme is significant for brand owners, as is provides both an opportunity to use their brands in new and creative ways and a sharp increase in the amount of activity that will need to be monitored in order to protect those brands.
Further information on the expansion of gTLDs, and the objection and dispute process, can be found in ICANN's carefully-crafted gTLD handbook (a mere 352 pages) or seeking legal advice.
Phil Thomson is a solicitor with Simpson Grierson, specialising in intellectual property. Email: email@example.com
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