Australia: What is a Top Level Domain and why should Trade Mark owners know?

Last Updated: 29 September 2011
Article by Bill McFarlane

With over 205 million domain names registered (not all of them are in use) it is confusing for trade mark owners trying to get their own domain name, stop others and competitors using their brand names as part of domain names or in Meta Tags (computer code contained in a web page that is not visible to internet users but provides indexing information for internet search engines) and generally makes it difficult to know what to do in the virtual world called the Internet.

 ICANN (Internet Corporation for Assigned Names and Numbers) is responsible for managing the Internet address space and is the sole body empowered to develop mechanisms for registering and managing internet addresses.

These internet addresses are the fundamental first step in connecting to the Internet, being the addresses used by your Internet Browser to find the page or pages of information you are after.

There are 21 gTLDs (generic Top Level Domain) [eg .com and .org] and there are 273 ccTLDs (Country Code TLD) [eg .au and .nz].

The domain space is changing and this round of changes will purportedly be the greatest change since the introduction of the Internet.

ICANN believes that the world needs another type of gTLD which has become known as .brand, eg .apple, .madderns and .fedex. Imagine your brand or company name being the legitimate ending of your email and web address.

However, as you can imagine there are going to be some issues. The obvious one being who of two legitimate brand owners should have the ending that is their brand to the exclusion of the other? Well in the new order it may be the one who can pay the highest price. But, I am getting ahead of myself, as the whole exercise is a complicated one which this article tries to present in an understandable way (even the experts are still working it out and ICANN is only guessing that all of the bases are covered, problems identified and fairness ensured, as discussed in mind numbing detail in the 305 page gTLD Applicant Handbook).

The reasons trade mark owners need to seriously consider the acquisition of a .brand include:

  • remember the lost opportunity presented by and the cost of getting your brand name back from squatters, opportunists, etc;
  • less confusion with a .brand where you are less likely to suffer web surfers being directed away from your WEB message;
  • easier to control users of .brand since all users of .brand can be controlled by the system administrator;
  • "confusingly similar" TLDs will be determined at the outset, so if .brand is obtained then .brands will be excluded; and
  • a .brand is forever the company's asset and inextricably linked to it

Trade mark owners or even industry collectives need to seriously consider collectively owning a .brand for the commercial field they operate in, such as .plumber, .lawyer and .hotel., and it should be noted that anyone can obtain a .brand.

The cost is significant in anyone's budget, with the Application cost alone being USD185,000. And that is just the start. That is, there is likely to be one or more of the following additional costs:

  • Yearly administration (monthly fees and data Escrow) of about USD30,000;
  • For such an important application, there is good reason to obtain the guidance of an industry expert (a prudent expenditure in the light of the potential importance) of about USD10,000 to USD20,000;
  • A reliable and ongoing registry system and IT support (cost will depend on the scale and popularity of the .brand domain) of about USD10,000 per annum;
  • There is a mandated "Registry Services Resolution Fee" and, depending on the level of review, an anticipated cost of USD30,000 to USD$50,000; and
  • There is also a "Dispute Resolution Filing Fee" payable by any entity filing a formal objection to a new gTLD (.brand application) on only four specific grounds and thus the initial fee is between USD10,000 and USD15,000. The estimated cost of the entire process could be as low as USD2,000, but in some matters it could be between USD70,000 and USD122,000. It is to be noted that the "winner" gets the deposit of the anticipated cost back. These cost estimates are given by ICANN on page 1-38 of the gTLD Applicant Handbook.

The organisation in charge of creating the new gTLD (generic Top Level Domains) has recognised that trade mark owners should be able to block the registration of gTDLs that are the same as their registered trade mark.

They have mandated a RPM (Rights Protection Mechanism). However, to access this process, trade mark owners who own a registered trade mark will be required to register it with the organisation's Trademark Clearing House and further prove, by declaration, that they are using the registered trade mark, all this being required to be done within the first 60 days of the beginning of the Launch Period after the domain space becomes available for registration.

The actual start date is not yet known but watch for announcements or check with your trade marks attorney.

Madderns will have a notice on their web site or you can register with the author Bill McFarlane to be placed on a list of people to be notified by email of the relevant dates once they are known.

There will be multiple rounds of application acceptance and thus there will be with each round, a set of strict times within which certain steps either can or must be taken, such as the mandated 30 day period within which to file an Objection (dispute).

There will be a Sunrise registration period and during that period there will be a pre-launch period of 30 days and all those registered trade mark owners who have provided their details to ICANN will be notified if a gTLD including their trade mark is applied for by another entity.

The process involved thereafter is best discussed with your trade marks attorney. In keeping with the draft timeline approved by the ICANN Board, the anticipated timeframe is as follows:

the draft of the gTLD Applicant Guidebook open for comment for 30 days, through to 15 May 2011 (with a final version of the guidebook available shortly thereafter); and

The new gTLD implementation program will be considered at an extraordinary meeting of the ICANN Board to be held in Singapore on 20 June 2011.

Things are moving quickly, quicker than trade mark attorneys would like and the largest body of trade mark practitioners, the International Trade Mark Association, is fiercely lobbying the powers that be to give trade mark owners the best possible position in this race.

Bill McFarlane and Louise Emmett attended the annual INTA conference in May to discuss this and other matters of trade mark importance with other interested parties at that meeting.

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.

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Bill McFarlane
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