At its latest series of public meetings concluding 18 March
2011, the Internet Corporation for Assigned Names and Numbers
(ICANN) has announced its intention to implement
the new generic top level domain (gTLD) program by
20 June 2011.
The gTLD program
Generic top level domains (gTLD) refer to three
or more sequence of letters at the end of an internet address.
Currently there are 22 gTLDs including the more frequently used
.com, .org, .net and lesser known strings such as .coop, .pro and
In October this year, ICANN intends to open applications for
unlimited gTLDs. This includes gTLDs in non-Latin scripts such
Arabic or Chinese. ICANN expects the expansion of gTLDs will drive
innovation, change and create more choice in the internet.
The benefits of owning a gTLD for multinational companies and
organisations are clear. Ownership of a brand TLD will not only
create new marketing opportunities but also allow consolidation of
internet presence and allow customers to bypass the use of search
engines. Canon, Deloitte, Hitachi and IBM have already announced
their intention to establish gTLDs using their trademark. From an
entrepreneurial perspective, broad non-specific gTLDs such as
.news, .sport or .food are likely to be profitable. Community-based
applications for gTLDs by interest groups or non-Latin speaking
groups are also expected.
ICANN has affirmed its intention to open applications for a
window of three months commencing October 2011. Applications
outside this period will not be accepted.
Although these changes will affect everyone with an online
presence, not everyone will be eligible to apply for their own
gTLD. There is an initial application fee of US$185,000. The
applicant is then assessed on its financial, technical and
operational capabilities of maintaining a gTLD. Once approved,
renewal fees are set at US$6,250 per quarter. A draft Proposed
Final Applicant Guidebook1 detailing the process is
available on the ICANN website. The final version is expected to be
available by 20 June 2011.
Impact on brand protection
Existing brand owners will need to consider the impact of the
change from a brand-protection perspective. The prospect of
unlimited gTLDs significantly increases the risks already facing
brand owners on the internet, including possible trademark
infringement, cybersquatting, brand dilution and consumer confusion
arising from similar names.
For brand owners who do not wish to apply for their own gTLD,
the following defensive procedures will be available:
filing an objection to an application for a gTLD name with
independent Dispute Resolution Service Providers;
registering your trademark with a Trademark Clearinghouse,
which is a database all gTLD operators must consult before
registering a domain name;
filing an application via a Uniform Rapid Suspension Procedure
to suspend an infringing domain name; and
filing a complaint against a gTLD operator for infringement
under a Post-Delegation Dispute Resolution Procedure
(PDDRP) for determination by PDDRP Providers.
At this stage, the following independent bodies have agreed in
principle to administer disputes:
International Centre for Dispute Resolution for disputes
relating to confusing gTLD strings;
Arbitration and Mediation Centre of the World Intellectual
Property Organisation for disputes relating to legal rights
International Centre of Expertise of the International Chamber
of Commerce for disputes relating to public interest and community
The proposed defensive procedures are described in the draft
Proposed Final Applicant Guidebook.
These procedures are by no means comprehensive. Each imposes
specific requirements and is limited in the type of relief a
complainant may obtain. For example, the Trademark Clearinghouse
will only accept registered trademarks. There are also fees
involved with all four procedures, which are not recoverable even
if the complainant is successful. The Government Advisory Council
(GAC), which represents over a hundred national
governments and organisations, has stated in its latest meeting
with ICANN that it has continuing "fundamental concerns about
the inadequacy of the proposed rights protection
What you need to do
Although ICANN is still finalising the details of the new gTLD
program, it has clearly stated its intention to open applications
by October 2011. Brand owners will need to assess the costs and
benefits of applying for a gTLD or implementing defensive
strategies to protect their trade marks. Please contact us if you
require any further information or assistance.
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