Australia: New Generic Top-Level Domains: the Web is about to get bigger. Are you ready?

Last Updated: 8 December 2010
Article by Chris Round and Jane Owen

What is a gTLD?

A top-level domain name (TLD) refers to the suffix that appears at the end of the domain name.

Currently there are 21 generic TLDs (gTLDs, such as .com, .org, .biz, .edu and .asia) and approximately 250 country-code TLDs (ccTLDs, such as .au, .uk and .tv), each of which has its own eligibility requirements for registration of a domain name in that space.

In late 2005 ICANN, the authority responsible for the management of the top-level domain name system, undertook a policy review of the existing TLD framework, which culminated in the decision in 2008 to open up registration of new TLDs. After years of consultation, ICANN has this month released the proposed final version of the new gTLD program, which is scheduled to be implemented in 2011.

The new gTLD program will allow applicants to register four kinds of names as TLDs:

  • generic word TLDs (eg .web, .home)
  • corporate TLDs (eg .apple, .sony)
  • community TLDs (eg .redcross, .amnesty)
  • geographic TLDs (eg .sydney, .melbourne)

The ability to register a brand name as a TLD obviously presents potential from a marketing perspective. Registration of a TLD also offers other benefits. Not only will the new gTLD operator gain registration of the TLD name, they will be able to register, and confer registration of all domain names falling under that new gTLD, ie "second-level" domain names. The gTLD owner will in effect become its own registrar. Registration of a gTLD, once granted will be for a minimum 10 years and subject to automatic renewal.

The application process

Currently when a company or person applies for a domain name, they are registering a name at the second or third level of the domain name. Registration of that domain name is facilitated and recorded by the registrar accredited to manage the TLD under which the domain name is registered. For example the .au space is currently managed by AusRegistry.

Unlike applying for a domain name at the second-level, an applicant for a new gTLD is, in effect, applying to create and operate a registry business.

In order to register a new gTLD the applicant will need to establish to ICANN's satisfaction that the applicant has reputable standing and the technical and financial capability to run the new gTLD. Although in terms of technical capability, it is likely that existing registry operators will offer services to manage gTLD on behalf of prospective applicants. The applicant will need to also describe the policies and procedures it will implement to prevent abusive registrations and other unlawful conduct under their new gTLD.

These hurdles, coupled with costly application fees (US$185,000) and ongoing subscription and transaction fees (estimated at US$6,250 per year, plus US$0.20 per second-level domain registered or renewed), are likely to almost entirely prevent abusive gTLD registrations. One estimate of the likely costs of setting up the registry is more than US$1,000,000.

Nevertheless, there are processes in place to deal with bad faith registration of gTLDs.

Shortly after the closing date for applications, ICANN will publish a list of the proposed gTLDs on its website for a 45 day "Public Comment" period. At the close of that period, there will be "Initial Evaluation" of all applications, during which ICANN will assess the merits of the application taking into account any public comments received. This process is expected to take approximately five months, although if ICANN receives more than 500 gTLD applications in the first instance, this process is likely to take much longer.

When the list of proposed gTLDs is published, brand owners will be entitled to file a formal objection against registration of a gTLD which is identical to or confusingly similar to an existing trade mark. This "objection filing" period will close two weeks after the results of the Initial Evaluation are published. The gTLD application will then be referred for dispute resolution. It is unclear at this stage how long the dispute resolution procedure will take, although it is estimated that it may take up to two years before a dispute is determined.

Trademark Clearinghouse and domain name monitoring

As part of the new gTLD program, ICANN will establish a "Trademark Clearinghouse", which will serve as a centralised database of trade marks against which new gTLD operators will be required to assess all new domain names registered under their respective TLDs.

New gTLD operators will then be required to provide one of two pre-launch rights protection mechanisms:

  • a "pre-launch claim service", under which trade mark owners who have registered their trade marks with the Trademark Clearinghouse will be notified whenever an application tries to register a domain name identical to the trade mark; or
  • a "sunrise period", which will allow trade marks owners registered with the Trademark Clearinghouse an opportunity to register a domain name in the gTLD before the domain names become available for registration to the public.

The Trademark Clearinghouse will only accept nationally or internationally registered trade marks, or marks which have been recognised by a Court. Common law or unregistered trade marks will not be permitted. It is therefore crucial that anyone seeking to prevent domain name abuse achieves registration of any unregistered trade marks they wish to protect.

Service providers will be established to manage and assess applications to the clearinghouse. Until those service providers are appointed, it is not known what costs will be associated with registering for the clearinghouse. While there are some obvious limitations (only domain names identical to trade marks in the clearinghouse will trigger the rights protection mechanisms), the Trademark Clearinghouse is nevertheless a promising tool for brand owners to get one step ahead of potential cybersquatters.

Uniform Rapid Suspension Procedure

Currently, domain name disputes are governed by the Uniform Domain-Name Dispute Resolution Policy (UDRP), or one of its equivalents (eg the AuDRP). While often effective, complaints under the UDRP can be slow and costly, even when the domain name registrant does nothing to dispute a complaint. Even if a trade mark owner is ultimately successful in having a domain name returned, those costs are not recoverable.

New gTLD operators will be required to implement a new "Uniform Rapid Suspension" (URS) procedure designed as a fast track version of the UDRP.

A complaint issued under the URS undergoes an administrative check which must be completed within three business days, then assuming the formalities of the complaint are in order, the domain name must be "locked" within 24 hours and will remain locked until the merits of the dispute are determined. The lock will not prevent the website from displaying, but will prevent the person from transferring the domain name or trying to alter the registration data in any way.

If the registrant does not formally respond to the complaint within 14 days, then the complaint will be reviewed by an examiner immediately.

If the registrant disputes the complaint, the matter will be determined upon the material filed by the parties on an expedited basis. Under the current draft proposal, the determination must be handed down within 14 days after the registrant files a response.

If it is found the domain name was registered in bad faith, the name will be suspended for the duration of the registration and resolve to a page referring to the URS. So, unlike a successful UDRP complaint, the URS will not allow an infringing domain name to be transferred to a trade mark owner. The complainant would need to wait until the registration lapsed and then upon expiry apply for registration of the domain name in its own name.

Despite this shortcoming, the URS represents a potentially effective tool to ensure rapid determination in clear-cut cases of domain name abuse.

Other strategies

In addition to the procedures referred to above, trade mark owners should also consider implementing additional strategies both to take advantage of new opportunities gTLDs offer and to prevent domain name abuse at the second-level.

Once new gTLDs begin operating it should soon become clear which of the new TLDs will become the next big domain players. Brand owners may consider, either as a defensive strategy or for their own marketing purposes, registering domain names in the more popular new gTLDs or in other gTLDs which have some connection with their business.

Important Dates

December 2010 New gTLD Proposed Final Applicant Guidebook released for public comment
10 December 2010 ICANN board to review public comments and approve New gTLD Final Applicant Guidebook
10 January 2011 New gTLD Final Applicant Guidebook released to public
January – May 2011 ICANN global communication campaign
30 May 2011 Application for new gTLDs open
15 July 2011 Application period closes
August 2011 (est.) List of proposed gTLDs published and objection filing period commences
August-September 2011 (est.) Public Comment period
mid-January 2012 (est.) Close of Initial Evaluation period and publication of approved gTLD applications
late-January 2012 (est.) Close of objection filing period


Our experience

For the past decade Middletons has been involved with domain name and internet disputes, from disputes under the UDRP and auDRP systems, and infringing products sold online, to more recent disputes concerning Google AdWords.

Middletons' Intellectual Property Group delivers to clients a diverse range of services enabling them to evaluate, register, enforce and assist in the commercialisation of intellectual property rights. We also provide commercial advice relating to the acquisition of intellectual property.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions