On 20 June 2011, ICANN (Internet Corporation for Assigned Names and Numbers) approved the new gTLD program in Singapore. This means the number of Internet domain name endings, called generic top-level domains (gTLD), will increase exponentially from the current 22.
From January 2012, it will be possible to register .brand gTLDs such as .nortonrose. Other popular terms such as .music, .sport and .food are also available for registration. Geographic gTLDs like .london or .australia will available to applicants who have government approval and supporting documentation. Geographic gTLDs will not be available until the second application round. Importantly, Internationalised Domain Names (IDNs), domain name endings in non-Latin character sets such as Arabic, Chinese, Greek and Cyrillic, are also available under the gTLD program.
Who may apply?
Corporations, organisations, institutions and communities are eligible to apply for gTLDs. Individuals and sole proprietorships are not eligible. ICANN will perform background checks and consider criminal history such as fraud, corruption, tax-related crimes or any history of cybersquatting.
Application process and costs
The first round of applications for new gTLDs will be accepted from 12 January 2012 to 12 April 2012 and operate on a first come/first serve basis. The cost of registering a gTLD is US$185,000. The cost of operating a gTLD is approximately US$25,000 per year.
Applicants must register through the online application system called the “TLD Application System” (TAS) and pay a deposit of US$5,000. Applicants are then required to complete an online questionnaire addressing technical, financial and business operations and submit the remaining US$180,000 application fee.
After the application round closes, ICANN will evaluate the applications and publish complete applications on the ICANN website. There are two components of the initial evaluation of a gTLD: string review and applicant review.
During the string review, ICANN will determine, among other matters, whether the applied-for gTLD is so similar to other strings (including existing TLDs, reserved names, applied-for TLDs and strings requested as IDN country-code TLDs) that it would create a probability of user confusion. If an applied-for gTLD is the same or too similar to an existing gTLD or reserved name, it will not be accepted. If an applied-for gTLD is the same or too similar to another applied-for gTLD, the gTLD strings will form a ‘contention set’ where applicants are encouraged to resolve the matter themselves. Failing resolution, an online auction is held for that gTLD string.
During the applicant review, ICANN will review the applicant’s technical, financial and operational capability and its proposed registry services. Applicants must also provide financial and business plans, financial projections and provide evidence they can meet costs associated with operating a gTLD.
What this means?
Corporations and organisations may register their name, trade mark, brand or trading name as a gTLD or a domain name within a gTLD. Although substantial technical and financial resources are required, operating a gTLD will mean increased website accessibility, global presence and online marketing capabilities. Additionally, by operating a gTLD an owner has significant control over the gTLD and the domain names within it.
Every corporation and organisation involved in e-commerce and those engaged in cross-border business will need to revisit their intellectual property and domain name strategies when approaching the new gTLD program. Applicants need to consider whether they are prepared to invest significantly to increase their global online presence or adopt a different strategy to maximise online presence and protect trade mark rights.
Different strategies include:
- Registering a domain name within a gTLD (e.g. registering nortonrose.law within the .law gTLD).
- Adopting a defensive strategy by monitoring gTLD applications and filing objections to applications that infringe your trade mark rights.
Although, the significant cost and technical requirements of registering a gTLD may reduce the likelihood of cybersquatting, companies need to monitor the applications posted on ICANN’s website that may infringe their trade mark rights. Companies should consider filing objections to applications that infringe trade mark rights or mislead Internet users, with a focus on domain name registrations within the new gTLDs.
Note: This article is based on the latest version of the Applicant Guidebook dated 30 May 2011 approved by a vote of ICANN’s board of directors: 13 approving, 1 opposed, and 2 abstaining.