So can I register .anything as an internet domain name? You may have heard in the news recently about the city of Sydney, Australia and the community of Sydney, Nova Scotia, Canada, being embroiled in a fight over the internet domain name .sydney. So, what’s it all about? From November 2011, new rules will make it possible to register generic words such as .melbourne or .fashion (or .anything, really) for the first time as internet domain names. Under each of the potentially thousands of new generic top-level domains, you will also be able to register “second level” domain names. These developments may have serious implications for brand owners seeking to prevent domain name misuse. Protecting your trade marks is now more important than ever, but for those who are prepared this will be a fantastic opportunity.
What is a gTLD?
A gTLD, or generic top-level domain, refers to the suffix that appears at the end of an internet domain name, such as .com, .org, .net and country codes such as .au and .uk. Currently there are 22 gTLDs and over 200 country codes. In 2008 ICANN, the authority responsible for the management of this system, decided to open up registration of new gTLDs. Applications open at the end of this year and ICANN is hoping to have all new gTLDs up and running by the end of 2012. The new program will allow applicants to register four kinds of gTLDs: generic words (eg .fashion, .shoes); corporate (eg .nike, .louisvuitton); community (eg .nosweat, .amnesty) and geographic (eg .melbourne, .sydney). The ability to register a gTLD presents untold potential from both a marketing and business perspective. Not only will the new gTLD operator gain registration of the gTLD name, they will own the whole domain and will be able to register and sell registration of all domain names falling under that new gTLD, ie “second-level” domain names. This is why securing a gTLD like .sydney could be very lucrative.
The application process
Currently, if you want to apply for a domain name you apply to a domain registrar to have that name registered at the second-level (eg www.brand.com.au). Unlike applying for a domain name at the second-level, an applicant for a new gTLD is, in effect, applying to create and operate a registry business. In order to register a new gTLD the applicant will need to establish it has reputable standing, the technical and financial capability to run the new gTLD, and the ability to pay the costly application fee of US$185,000 and ongoing subscription and transaction fees of about US$6,250 per year. The application fee alone should almost entirely prevent opportunists from cybersquatting new gTLDs. Nevertheless, there will be processes in place to deal with bad faith or abusive registration of gTLDs. But the high costs are also likely to put registration of a new gTLD out of reach for all but the biggest brand owners. Having the technical capability to run a domain is also a barrier, but in practice, most brand owners applying for a new gTLD will contract domain name operators to run the gTLD for them. So, although stories about cities fighting over a name are certainly interesting, it remains to be seen whether in reality new gTLDs are something most businesses should be excited about. For most people, the opportunities and risks will lie in the infinite number of second-level domain names that could potentially be registered under the new gTLDs. Currently a brand owner, for example a Melbourne fashion designer, could register www.brand.com.au, www.brand.net.au etc. Under the new system, he or she might be able to register www.brand.fashion, www.brand.melbourne, www.brand.shoes etc. However, this also means there will be greater potential for others to try and hijack your trade mark. The new gTLD program has implemented a number of measures to prevent opportunists and competitors from registering your trade mark as a domain name.
The Trademark Clearinghouse
One of the features of the new gTLD program is a “Trademark Clearinghouse” (the Clearinghouse), or centralised database of trade marks, against which new gTLD operators will need to check all new domain names under their gTLD before they can be registered. Trade mark owners will need to apply to have their trade marks included in this database. The Clearinghouse is triggered in two ways: a “sunrise period”, where trade mark owners registered with the Clearinghouse will have an opportunity to register a domain name in the gTLD before the domain names become available to the public, or a “pre-launch claim service”: trade mark owners registered with the Clearinghouse will be notified when an applicant tries to register a domain name identical to their registered trade mark and will have an opportunity to oppose registration.
This service promises a far higher level of protection than is currently available and represents a powerful tool to prevent cybersquatting and other abuses of intellectual property rights. The Clearinghouse will only accept nationally or internationally registered trade marks, or marks which have been recognised by a Court. It is therefore crucial that you register your trade marks if you want to benefit from this new service. Currently, a service provider has not yet been established to manage and assess applications to the Clearinghouse, so nothing is known about the costs of applying and the finer details of how the Clearinghouse will operate. It is anticipated that a provider for the Clearinghouse will be nominated by the end of 2011 and that you will be able to register your trade marks with the Clearinghouse from around September 2012. If you haven’t already registered your brand as a trade mark (not just a business name), now is the time to do so.
What now?
Once new gTLDs begin operating it will be clearer which of the new gTLDs will become the big domain players. Brand owners may consider, either as a defensive strategy or for their own marketing purposes, registering domain names in the more popular new gTLDs or in other gTLDs that have some connection with their business. There will be a number of domain name dispute resolution procedures; however, to avoid the inevitable costs and time involved in these disputes, the most important first step is registering your trade marks. This will ensure you have a head start in getting your brand in the right space and preventing competitors and cybersquatters from doing the same.