A number of new generic top-level domain names (“gTLDs”) were approved in 2000 and 2004 including .aero, .museum, .jobs, .mobi, .tel and .travel. Under the new ICANN guidelines, entrepreneurs, businesses, governments and communities around the world will be able to apply to operate a TLD of their own choosing. This could be their own brand in the form “.brand”, or broader non-specific gTLDs such as “.food”, “.sport”, “.fashion” etc.
An applicant for a new gTLD will be applying to create and operate a registry business supporting the TLD. The applicant will need to demonstrate operational, technical and financial capability to run a registry. However, the applicant gets the opportunity to set the business model and policy for how they will use their gTLD, allowing them the possibility to refuse application for second level domains from competitors, cybersquatters or scammers.
ICANN anticipates board approval of the New gTLD Program on 20 June 2011 (the latest (unapproved) version of the Applicant Guidebook published 30 May 2011 is available here). This would mean applications would be expected to be open around October 2011. ICANN has indicated that the application window will be open for 90 days. After the application window, there are several evaluation stages, which could take between 8 - 18 months to complete. It is interesting to note that the latest version of the Applicant Guidebook states that ICANN reserves its rights to make binding changes to the Guidebook after the application process has started.
The fee for application is estimated at US$185,000, with a US$5,000 deposit fee payable upon registration. Once an applicant has signed a New gTLD Agreement with ICANN, there is an ongoing fee of US$6,250 per calendar quarter.
The high cost is likely to be a significant barrier-to-entry to many brand owners, but there will be other avenues available for protection.
Other avenues for trade mark protection
Whilst ICANN states that it will not be offering sunrise registrations for trade mark owners, or the opportunity to defensively register gTLDs (ICANN expects all new gTLDs to be operational), there will be restrictions on applicants in that:
- applicants must provide rights protection mechanisms meeting certain minimum standards for second-level registrations; including:
- start-up rights protection measures (Sunrise periods and trade mark claims periods); and
- post-launch rights protection measures; and
- all new gTLDs must ensure that second-level registrations are subject to ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP).
Brand owners who do not wish to apply for their own gTLD will be able to defensively protect their rights by:
- filing an objection to a proposed gTLD with independent Dispute Resolution Service Providers;
- registering their trade mark with a Trademark Clearinghouse (a centralized location for storage and authentication of trademark information contracted by ICANN, which all gTLD registries would need to consult prior to registering a domain name);
- filing an application to suspend an infringing domain name through the Uniform Rapid Suspension System (a faster and less expensive process for resolving clear-cut cases of infringement than UDRP); and/or
- filing a complaint against a gTLD operator for infringing behaviour under the trade mark post delegation dispute resolution procedure.
There will be fees associated with all of these defensive options.
Where to from here?
ICANN is still finalising the details of its New gTLD program, and encourages community enquiries on the gTLD process. Questions may be sent to firstname.lastname@example.org. In the mean time, companies should assess both costs and benefits of applying for a gTLD or implementing defensive strategies to protect their intellectual property rights.