From .com to .yourbrand, .music, .movie, .shop - Understanding the New gTLD Program, and What it Means for Your Brand
July 1, 2011
After years of consultation, the Internet Corporation for Assigned Names and Numbers (ICANN) has approved the next round of generic top-level domains (gTLDs), which are generic suffixes of domain names (e.g. .com, .net, and. org). ICANN will accept applications for new gTLDs from January 12, 2012, to April 12, 2012. It is generally recommended that organizations wishing to apply for a new gTLD begin preparing now since the application process is complex and time-consuming.
Securing a brand-specific gTLD could be an effective marketing tool. Ownership could increase brand profile. Brand owners could use the gTLD/registry with their own websites, and could make domain names available for others to register, for example, enabling customers to use the gTLD for personalized pages, and to make use of ancillary services. So far, however, only a few companies and organizations have publicly announced their intention to apply for a branded gTLD (e.g. .canon, .hitachi, .nokia, and .unicef). Several companies, organizations and consortiums have announced their intention to apply for generic gTLDs (e.g. .music, .movie, .wine, .sport, .shop, .hotel, .bank, and .green).
The gTLD application process includes both approval of the gTLD, and approval of the applicant to become the registry for the new gTLD. The process is complex. The gTLD will be evaluated for its ability to serve as a top-level domain, and should provide some benefit to the Internet community. The rights, if any, of third parties will be considered before a gTLD will be approved. The applicant also needs to meet technical and operational requirements, and show that it can operate the proposed registry (e.g. by demonstrating technical and operational stability and financial means). The application process is expected to take from 9 to 20 months.
Applying for a gTLD will be expensive. The filing fee is US$185,000. On top of that, the legal and technical fees are expected to start at $200,000 and could increase significantly depending on the evaluation of the application (i.e. whether objections are filed, and what is technically required to operate the gTLD for its stated purpose). If approved, there will be additional fees payable to ICANN to maintain the gTLD per year – likely approximately $25,000 per year. These fees are separate from fees associated with maintaining the registry.
During the application process, there is an opportunity for third parties to submit comments, and to formally object to approval of a gTLD. Formal objections can be based on legal rights, including trade mark rights. Brand owners can monitor the applications, and if one happens to be filed for their mark (or similar), brand owners may consider submitting comments and a formal objection.
Once a new gTLD launches, the registry will be required to set up dispute resolution processes to address cybersquatting. There will also be a “Trade mark Clearinghouse,” which will serve as a central repository for information pertaining to the rights of trade mark holders. The Clearinghouse will provide information to new gTLD registries to support sunrise and trademark claims services. The potential breadth of enforcement activity on the Internet will increase significantly. Trade mark owners can consider setting up a watch service to be given notice of when new domain names are registered that are identical or similar to their brand.
Once this round of gTLD applications closes, it is not known when the next opportunity to apply for a gTLD will come.
If you think your business may want to apply for a new gTLD, please contact Sharyn Costin.
Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.