Earlier this year, ICAAN began accepting applications for new
domain name extensions for new categories such as brands or
products (eg. .coke), geographic regions (eg. .london), community
(eg. .rugby) and generic terms (eg. .fashion).
Securing a new gTLD is a substantive investment for a company or
organisation. An application costs US$185,000 and an annual fee of
US$25,000, and applicants also need to establish that they have the
ability to run a domain registry. An investment at this level is
only warranted where the organisation sees significant value in
having the top level domain name extension.
On 13 June 2012, ICAAN published the full list of applications
for new domain name extensions. Now ICAAN will evaluate these and
there will be an opportunity for organisations to object to the
applications. Among the 40 applications by Australian organisations
are applications from banks, financial institutions and
universities. The majority of the 40 applications are for branded
domain name extensions such as .sbs and .iinet. There are also some
applications for generic terms. Tennis Australia has applied for
.tennis and Open Universities Australia Pty Ltd has applied for
.study and .courses.
Initial evaluation
ICAAN has announced that it will process the applications for
new gTLDs in batches of 500 (as it received 1,930 gTLD applications
and it is not possible for it to evaluate and process all
applications at once). It will announce the first group of
applications to be processed on 11 July 2012. ICCAN will then
undertake an initial evaluation of the first batch of gTLDs applied
for.
As part of this process, ICAAN will review the gTLDs to
determine whether a gTLD applied for is too similar to another
application, whether it meets certain technical requirements and
whether the gTLD is a geographic name.
ICAAN will also evaluate the applying organisation to determine
whether that organisation meets the required operational, technical
and financial capabilities to run a domain name registry.
ICAAN will reveal whether applications have succeeded or failed
some time in January 2013. It has not announced when it will
process the second batch of applications.
What you can do
Between 13 June 2012 and 12 August 2012, interested parties will
have the opportunity to raise concerns about the first batch of
gTLDs. Comments submitted during this two month window may be
considered by ICAAN as part of its initial evaluation. However,
comments will not be considered a formal objection and will not
block an application from being evaluated.
During a separate seven month period that ends on 13 January
2013, parties with grounds to oppose will have the additional
opportunity to file formal objections (for a fee) against specific
gTLDs on one of four objection grounds, ie. that the applied for
gTLD:
is the subject of substantial opposition from a significant
portion of the community that the gTLD is targeting;
is confusingly similar to an existing TLD or to another
applied-for gTLD string;
violates the legal rights of the objector (eg. a trade mark
right); or
goes against generally accepted legal norms of morality and
public order that are recognised under principles of international
law.
The "legal rights" objection will permit trade mark
owners to file objections on the basis that the proposed gTLD would
infringe their existing trade mark rights. Brand owners should
review the ICAAN website after 11 July 2012 to determine whether a
proposed gTLD about which they have a concern is in the first batch
of gTLDs to be processed and, if so, file an objection before the
deadline.
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
Persons listed may not be admitted in all states and
territories.
Specific Questions relating to this article should be addressed directly to the author.
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