The Internet Corporation for Assigned Names and Numbers
(ICANN), the entity responsible for the management
of top-level domains, has approved a groundbreaking plan to
dramatically increase the number of domain name suffixes that are
available. This will enable big companies (and those with enough
money) to replace ".com" with their own brand, for
example ".apple" or ".coke".
From 22 to .unlimited
After years of debate, ICANN voted overwhelmingly in favour of
one of the biggest changes in the web's history on 20 June,
allowing a drastic expansion in the range of web suffixes
available, despite fears that the shift would cause some confusion
and favour large companies.
Under the new naming system, businesses will not be restricted
to the list of 22 generic top level domains
(gTLDs) that include ".com",
".net" and ".org" when they apply to register a
domain name. Domain names will be able to end with almost any word
in any language, including non-Roman scripts.
ICANN contends that the system will offer organisations around
the world the opportunity to market their brand, products,
community or cause in new and innovative ways. Companies in
particular will have the opportunity to take greater control of
their branding and develop it in their own fashion.
Canon and Deloitte are among companies that have expressed
interest in creating their own, customised domain names, such as
".canon", while generic names, such as ".cars"
and ".hotels", will be auctioned to the highest bidders.
Other names, such as ".eco" and ".school", and
place names, such as ".paris", are also likely to command
strong interest from organisations and governments.
The new domain names will not come cheap or easy. It will cost
US$185,000 plus the applicant's legal and consultancy fees just
to apply, and a number of criteria must be met before ICANN will
allow a firm to own the gTLD of its choice. ICANN will also charge
an annual fee of US$25,000.
According to ICANN guidelines, only "established
corporations, organisations, or institutions in good standing"
may apply for a new gTLD, and applications from individuals or sole
proprietorships will not be considered. Applications for new gTLDs
will be accepted from 12 January 2012 to 12 April 2012, and the
first possible time at which some of the applications could be
approved would be late in 2012.
New domain names, old trademark problems?
From a trademark perspective, the new gTLDs have the potential
to offer both a blessing and curse to companies. New gTLDs will
provide companies with access to new opportunities to reinforce
their brand names, but at the same time may expose them to
expensive new challenges in defending their trademarks. The new
system has not been without its opponents, with many large
companies expressing concern that they may be forced to spend
millions registering their brand names simply to protect their
Presumably London England will outmuscle London Ontario one way
or another for .london, but all of the places in the US named
"Springfield" (apparently the most common place name
there) will conceivably be competing with each other and the
producer of "The Simpsons" for that name. Will St
Petersburg Russia give the Anglicised name to the city in
ICANN has worked to mitigate these issues, including maintaining
a trademark clearinghouse to track registered names and
establishing a new system to allow rapid takedowns of domains found
to be infringing trademarks. It is hoped that the significant fees
charged by ICANN for new gTLDs and the difficult application
process will deter domain squattin", where opportunistic
applicants seek to resell domain names for a profit after buying
them cheaply, a problem in the earlier days of the internet.
Thanks to Cameron McCoy for his help in writing this
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 Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
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”
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).