Background

In June 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) launched the "New generic top-level domain (gTLD) Program". The program allows parties, through ICANN’s application process, to redefine endings for internet domain names beyond the core generic endings such as ‘.com’, ‘.net’ and ‘.org’. These new domain endings are known as the new gTLDs or ‘strings’.

Should my business get involved?

There are three ways businesses can become involved with the new system. A business can:

  • apply for a new gTLD;
  • utilise a Trademark Claims Service through the Trademark Clearinghouse; and/or
  • utilise a Sunrise Service through the Trademark Clearinghouse.

Applying for a new gTLD

The New gTLD Program allows organisations to manage their own top-level domain as a registry. For example, the New South Wales State Government, as the applicant for ‘.sydney’, will be able to manage registrations from within the organisation for domains such as ‘festivals. sydney’ or ‘sport.sydney’. The ending of ‘.sydney’ gives authenticity to the website and obviously also gives geographical indication. This is an opportunity for businesses to take ownership of a part of the internet for the benefit of their customers, suppliers, channel networks, users and public in general. Applicants include government bodies and private and public entities from a variety of industries.

The application window opened in January 2012. ICANN has held a priority draw to determine the order in which applications would be processed. The first stage of the assessment process is the "Initial Evaluation", whereby the applications are assessed by expert third party evaluators. Applications that do not face any objections in the Initial Evaluation can proceed to the contracting stage.

There are 1822 current applications. As at 9 August 2013, ICANN had published Initial Evaluation Results for the first 1600 applications. Of those 1600 assessed, 1482 applications have passed Initial Evaluation. Examples of those applications that have made it through to the next stage are:

  • tennis (applicant Tennis Australia Ltd)
  • sydney (applicant State of New South Wales, Department of Premier and Cabinet)
  • boston (applicant The Boston Globe Newspaper Company Inc.).

Although entities from anywhere in the world that meet the pre-defined criteria and requirements (as outlined in ICANN’s Applicant Guidebook) can apply, the program carries inherent risk. To apply for a top-level domain is a business commitment to become a registry, because if an application ultimately makes it all the way through the application process, the applicant will become a registry for the new gTLD it applied for.

The evaluation fee is US$185,000, and applicants must demonstrate sufficient financial depth to keep the registry fully operational for at least three years even if the business plan does not achieve its objectives.

Further, there is no guarantee you will get the string you applied for. If you do not pass the extensive evaluation process you could lose some or all of your initial investment. As with any new business, getting the operation started does not guarantee that revenues will profitably sustain it. Running a registry requires employing highly skilled technical operators and/or negotiating an agreement with a technical partner.

Trademark Clearinghouse – Trademark Claims and Sunrise Services

The Trademark Clearinghouse (TMCH) was established by ICANN to assist in protecting trade mark rights in the new gTLD system. It opened for registrations in March 2013.

Essentially, the TMCH is a single global database for trade mark data, open to any holder of eligible trade marks (including both individuals and companies).

The introduction of the New gTLD Program and the sheer number of new domains that will be created generates new risks for trade mark holders. To counter this, every new gTLD registry will be required to use the Trademark Clearinghouse to support its pre-launch or initial launch period rights protection mechanisms. These mechanisms, at a minimum, must consist of a Trademark Claims service and a Sunrise process.

What are Trademark Claims and Sunrise Services?

Sunrise services allow trade mark holders an advance opportunity to register domain names corresponding to their marks before names are generally available to the public. New gTLD registries are required to offer a Sunrise period of at least 30 days.

The Trademark Claims period follows the Sunrise period and runs for at least the first 90 days of an initial operating period of general registration. During the Trademark Claims period, anyone attempting to register a domain name matching a trade mark that is recorded in the Trademark Clearinghouse will receive a notification displaying the relevant trade mark information.

If the notified party goes ahead and registers the domain name, the Trademark Clearinghouse will send a notice to those trade mark holders with matching records in the Clearinghouse, informing them that someone has registered the domain name.

If I submit my trade mark to the TMCH, how will these services work for me in practice?

Example trade mark:

PIPER ALDERMAN

Sunrise Service: If the registered trade mark PIPER ALDERMAN is lodged with the TMCH, then the owner would be allowed a 30 day ‘Sunrise Period’ whenever a new gTLD is released. If the owner is a member of the TMCH, it will be notified that a new gTLD (for example, .law) is open for registration, and choose to take steps to register the domain name ‘www.piperalderman.law’. Note that the owner would receive notification of all the new gTLDs as they are introduced, not just the relevant ones. After that initial 30 day period, the new gTLD will be open to non-members of the TMCH to register corresponding domain names.

Claims Service: If the owner enters PIPER ALDERMAN into the TMCH, then hypothetically the following could occur:

  • a new gTLD (for example, ‘.law’) is released
  • someone other than the owner attempts to register ‘piperalderman.law’ or ‘piper-alderman.law’
  • that potential registrant will receive a warning that the domain name matches a trade mark record in the TMCH. It will be asked to confirm that its use and registration of the domain name will not infringe the trade mark owner’s rights, and
  • If, after receiving the warning message, the registrant continues to register, then the owner of the trade mark would receive notification of the domain name registration, so they can take any appropriate action.

Trade mark owners can elect to utilise one or both of these services.

What is proof of use?

The Claims Service is available without submitting proof of use, but the Sunrise Service is only available if proof of use of the trade mark has been submitted.

For verification of proof of use, trade mark owners must submit:

  • a sample, such as an advertisement, a branded product, or some other example showing the trade mark in use, and
  • a declaration stating that the trade mark is indeed being used as stated.

Proof of use is not required for general entry into the TMCH, but a trade mark owner cannot participate in the Sunrise Services if it is not validated with this.

When is a trade mark eligible for registration with the TMCH?

A trade mark is eligible if it is:

  • nationally or regionally registered word marks from any jurisdiction, or
  • a word mark that has been validated through a court of law or other judicial proceeding, or
  • a word mark that is protected by a statute or treaty in effect at the time the mark is submitted to the TMCH for inclusion, or

Other marks that constitute intellectual property may be recorded in the TMCH by arrangement with a registry.

TMCH Fees

The basic fee structure is as follows:

  • US$150 for 1 year
  • US$435 for 3 years (saving US$15) and
  • US$725 for 5 years (saving US$25)

The bottom line

On balance, we see that although applying for a new gTLD presents opportunities for businesses, such an application is financially risky and a big commitment. Businesses may be better off bypassing that option and simply submitting their registered trade marks to the TMCH (to utilise one or both of the services outlined above) as a level of protection in the new system.