Watch out for the next generation of domain names set to revolutionise the .com world
1/07/2011

The domain name world is set to change with the introduction of an expansive program for the existing number of generic top level domains (gTLD’s) beyond the .com, .net and .org names that are currently available. The new gTLD’s will be introduced to allow for a greater degree of innovation and choice in a world that already has over 1.6 billion internet users.

The changes were first proposed by ICANN in June 2008, but because of concerns expressed by various stakeholders about the increased potential for trade mark abuse and consumer confusion, were postponed for further consultation processes and deliberation to take place.

The first cycle for the submission of applications for the new gTLD’s will now open on 12 January 2012 and will allow trade mark owners to register their trade marks as top level domain names. This may include names such as .unilever, .nokia and .nestle, and the second level domain names arising out of these new gTLD’s leave a lot of room for play, e.g. repairs.nokia or maps.google. Entrepreneurs, businesses, governments and communities will also be able to apply to operate a top level domain of their own choosing, such as .adventure, .hotels and .southafrica. The recent changes that ICANN introduced also include the registration of internationalized domain names that are in Arabic, Chinese, Cyrillic, Greek and Davanagari language characters.

Insofar as the procedure for registrations of the new domain names go, ICANN will accept new applications only for the first three months following 12 January 2012, and will cap the number of new gTLD’s at a maximum of 1000 in that cycle. Further cycles are anticipated and will be announced once the first cycle applications have been processed. The approval process can take up to nine months for new applications that are relatively straightforward and for more complicated or contentious gTLD’s, it could take up to two years.

After the application period closes, ICANN will verify all of the applications to make sure that they are technically compliant and will then release on its website the list of the gTLD’s applied for, applicant names and other application data. ICANN has also issued an Applicant Guidebook which provides step-by-step procedures for new gTLD applicants, available here , or on ICANN ‘s website at www.icann.org.

Applicants will have to demonstrate their operational, technical and financial capability to run a Registry. They will also be required to ensure that they have a right in the proposed name. All new gTLD’s applicants must furthermore ensure that second level registrations are subject to ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP), that has so far been applied to all existing UDRP’s and has worked well to protect IP rights. There are processes that will deal with multiple applications and applications for confusingly similar gTLD’s and various evaluation panels will also be appointed to deal with issues concerning similarity, geographical names, technical issues, financial issues and the like.

ICANN does not contemplate a notification system to warn trade mark owners of possible conflicts, but has introduced an early objection based process that will enable them to demonstrate that a proposed gTLD will infringe their legal rights. This will be possible once the list of new gTLD’s have been published on ICANN’s website, using a pre-established Dispute Resolution Procedure. Such objections will be administered by three independent dispute resolution service providers, being the International Chamber of Commerce, the Arbitration and Mediation Center of the World Intellectual Property Organisation and the International Center for Dispute Resolution. Grounds for objection may include concerns based on confusion, prior legal rights, community objections and public interest objections.

ICANN has also introduced additional systems to find solutions to protect trade mark holders including a:
• Trademark Clearinghouse that provides a centralized location for storing and authentication of trade mark information,

• Uniform Rapid Suspension System that provides a faster and less expensive process for resolving clear cut cases of infringement and

• Trademark Post-Delegation Dispute Resolution Procedure which will be available to a right holder if a Domain Name Registry is engaging in infringing behavior.

The application fee for a new top level domain name is high, at 185 000USD, with an annual fee of 25 000USD.

There is some debate about whether the value of investing in a new gTLD is worthwhile in view of the expense associated with registering and maintaining a Registry for it. An initial rush to buy famous brand domain names and to use this as an offensive strategy to protect against brand infringement may prove a significant administrative and financial burden and is as unwise as protecting a trade mark by registering it as a domain name in every available top level and secondary level Registry, with all possible derivations and mutations.

In the end, any application for a new gTLD ought to make sound business sense in the long term and should, ultimately, enhance a company’s product visibility and marketing over and above the internet space that has already been carved out.

Charne Le Roux
Adams & Adams
June 2011