ICANN, the international governing body for domain names, is in the process of introducing to the world hundreds, and potentially thousands, of new generic top-level domains (gTLDs).

The term gTLD refers to the group of letters that appear after the dot at the end of a domain name (some of the most well-known existing gTLDs are .com, .org and .net). Making an initial application for a new gTLD costs applicants $US185,000. The race by many companies and organisations to gain rights to valuable gTLDs such as .app, .search, .game (and for New Zealanders .kiwi) netted several hundred million dollars in revenue for ICANN.

In April 2013 ICANN is due to announce the results of its review of the thousands of gTLD applications made in 2012 during the initial application period. ICANN has also recently indicated that 23 April 2013 is its first target date for the release of the first new gTLD domains. Indications are that the majority of these will be domains in foreign language characters, rather than English as they are now. ICANN plans to launch 20 new gTLD domains a week, starting from the first launch date.

Trademark Clearinghouse - a leading act

In advance of releases of new gTLD domains, ICANN has established a new global database known as the "Trademark Clearinghouse" (Clearinghouse). This went live on 26 March 2013.

ICANN advises that the Clearinghouse will enable companies and individuals to protect their trade marks while new gTLDs are introduced into the Domain Name System. The Clearinghouse will record and verify the rights of trade mark owners and allow them to gain priority over non-trade mark owners by registering a new gTLD domain that includes their trade mark (for example allblacks.kiwi). ICANN states that benefits to rights holders registering their marks with the Clearinghouse include:

  • Access to Sunrise Registration: The Sunrise period allows eligible rights holders the opportunity to register their marks as domain names in advance of the general public; and
  • Notification of Registration: During Sunrise and Claims periods, the Trademark Clearinghouse will alert rights holders when a domain name is registered that matches the rights holder's mark in the Clearinghouse.

It is expected that brand giants such as Apple and Sony (to name two) will utilise this service and apply to the Clearinghouse to help ensure they get first dibs on securing valuable trade marks as part of their suite of new gTLD domain names, for example ipad.computer, bravia.theatre.

The basic fee structure for trade mark owners to register is: US$150 per mark for one year, US$435 per mark for three years, and US$725 per mark for five years.

The New Zealand actors

Dot Kiwi Ltd, a company registered in New Zealand has applied for the .kiwi domain. While the process of examining and approving this domain has not yet begun, it is hoped that a .kiwi domain will be available near the end of 2013. This might be optimistic: registering a new gTLD and gaining ICANN release is only the first step. The opposition process must be successfully navigated, then the new domain owner needs to get the domain up and running and establish a process to assess and award new domains as they are applied for - without any glitches.

To .kiwi? Reasons why you should consider a .kiwi domain

Is there value for brand owners in being linked to the .kiwi domain? Is this something only New Zealand-based companies will find attractive, or will it appeal to international companies seeking a "kiwi connection"?

The .kiwi domain is likely to be attractive to businesses both in New Zealand and internationally. New Zealanders themselves strongly identify with being a "Kiwi", particularly when travelling abroad, and New Zealand companies will see an opportunity to trade off this. There is also the association with New Zealand as a "clean, green" part of the world - something that may appeal to New Zealand-based exporters and international companies alike. Being linked to a .kiwi domain arguably brings a lot of "feel good" benefits and positive affiliations, along with expanded brand exposure.

Big brand owners in New Zealand may also see the .kiwi domain as a valuable business asset to add to their stable of domain names. These companies may wish to register a .kiwi domain as early as possible, especially in conjunction with the Clearinghouse service. Taking this pro-active, defensive approach will reduce the risk that a third party will register the domain, potentially placing damaging material on the related website or simply requiring payment for release of the domain name.

To not .kiwi? Reasons why a .kiwi domain may not be worthwhile

Many businesses will not see the value in registering a .kiwi domain.

Having a .kiwi domain may mean just one more domain to maintain and police. The number of defensive registrations required to protect a brand will also increase. For example, a business may feel the need to cover all of its valuable trade marks under a .kiwi domain - if only to prevent a third party from registering it. This will increase costs for a business and could result in a number of unused domain names needing to be maintained.

Registering a .kiwi domain could result in increased consumer confusion. Consumers used to looking for websites using the suffix .com or .co.nz may not know whether the .kiwi domain is genuine and the related website is authorised by the business they are searching for. They may question whether they can rely on the information on the site. The .kiwi domain owner may need to ensure all sites are linked to its "main" site as well as take an active role in promoting the new .kiwi domain to increase consumer awareness. They will also need to ensure consumers identify with the domain and know that it is authentic.

The potential for confusion may increase. The New Zealand Domain Name Commission controversially opened registrations for the new .kiwi.nz domain name on 11 September 2012. Businesses will need to decide whether a .kiwi is preferable to a .kiwi.nz domain, whether both are needed, or whether either is justified.

Resolution

ICANN has poured a huge amount of time and resource into establishing the new gTLDs. There is a high level of international interest around the domains that will be released on the proposed launch date of 23 April 2013. We expect this will be reflected in the number of companies that make use of the Clearinghouse services now that the system is live.

While there are pros and cons around using a .kiwi domain name for your business, marketing your company using a .kiwi domain may end up being a relatively cheap way to utilise New Zealand's reputation and image internationally. It is one way to cash in on the hard work New Zealand has done to promote itself to the rest of the world and gain an asset for your business - without necessarily spending a lot of money on your marketing campaign. Will a .kiwi domain fly for you, or will it not take off?