Publications / Technology, Media and Telecommunications
New generic Top Level Domains (gTLDs) being introduced around the world are changing the face of the Internet. They will allow you to secure your own unique extension to traditional web addresses. Malcolm McBratney, Intellectual Property Partner from McCullough Robertson outlines the tips and traps around this new online tool.
gTLDs can take one of two forms. You may wish to apply to register your company’s name as a gTLD, such as www.shareholders.yourbrand. This will allow you to secure your brand as a gTLD and provide customers, business contacts and shareholders with security by letting them know that your websites all end with ‘.yourbrand’, whilst misleading websites might choose www.yourbrand.com or www.yourbrand.net which are more readily available.
Alternatively, you may wish to register a more generic industry or word, for example, www.miningcompany.mining. You may then choose to on-sell second level domains to others – in this example, it may be to mining companies who are then able to use www.miningcompany.mining (with a company’s name in the middle).
Because you will essentially be supporting the Internet’s domain name system, you can choose whether to sell the right to a second-level domain – you would not want to sell second-level domains of a brand name gTLD that you own, but may wish to market a generic word gTLD to a target audience. Importantly, in either case you will essentially be ‘running the shop’ and will be required to show operational, financial and technical competence.
The new gTLDs also raise issues surrounding trade mark and brand protection.
How can you protect your brand at the top level?
The application process for the first gTLD applications is currently open, with the registration period closing on 29 March 2012. It is important to protect your brand, as others could apply to register a gTLD using your brand or industry. Waiting for the gTLD to be registered as a domain (called post-delegation) before taking action is potentially time consuming, difficult and expensive. The administering organisation, the Internet Corporation for Assigned Names and Numbers (ICANN) has developed a formal objection process, which allows trade mark rights holders to object to the registration of a gTLD on the basis that it infringes the complainant’s legal rights.
From around 1 May 2012 and until around late November 2012, formal objections can be lodged by trade mark rights holders (whether or not the trade mark is registered – although the source of the trade mark rights must be filed in an objection). After this time, notice of the objections will be published and may proceed to dispute resolution. The World Intellectual Property Office (WIPO) will administer the process, and estimates that official fees will range US$10,000-$23,000 for each party, with the successful party receiving a partial reimbursement of the official fees. The process involves one or three experts reviewing both the objectors submissions and any response by the gTLD applicant.
McCullough Robertson can assist you in this process by conducting appropriate searches of gTLD applications and advising you of any potential conflicts. We can also assist you in the drafting and lodging of a formal objection, should you require one.
The yet-to-be-established Trade Mark Clearinghouse (Clearinghouse) will allow trade mark owners to supply their trade mark to a database to provide protection for brand owners in all new gTLDs, once released. Registries responsible for administering a gTLD will be required to use the Clearinghouse to inform owners of potentially infringing applications. Registries responsible for gTLDs will also be required to provide a ‘sunrise’ period for second-level domain registrations, which will give preference to brand owners over certain gTLDs. McCullough Robertson can assist you by organising the application for registration with the Clearinghouse, once it has been established. Reports suggest that the Clearinghouse may be up and running as early as the end of 2012.
Various procedures will be available subsequent to the registration of a gTLD, including the proposed Uniform Rapid Suspension process, the proposed Trademark Post-Delegation Dispute Resolution Procedure and potentially the existing Uniform Domain-Name Dispute-Resolution Policy. Brand owners will also have the option of initiating court proceedings through the Australian courts for infringement. The first gTLDs are expected to be registered in late 2012 or early 2013, at which time these procedures may become relevant for enforcing rights against trade mark infringers. Some of these procedures are expected to also be available for disputes surrounding the second level in a newly registered gTLD, for example www.yourbrand.mining.
Applying for and successfully registering a gTLD will give your brand protection over the top-level of a domain name (for example, www.aboutus.yourbrand). Positive reports on gTLDs herald them as a way to provide authenticity for brand owners; by securing the gTLD, you are preventing anyone else from having your brand at the end of a domain address (including potential fraudsters).
The process requires completing the application and paying the US$185,000 registration fee. Additional fees are payable subsequent to the registration (including, for example, continued operations fees and administration fees payable to ICANN). Some reports have suggested costs upwards of a US$1 million investment to register and maintain a gTLD over the next few years.
Alternatively, you can choose to make an informal comment on an existing application. Once the application process for gTLDs is completed, the applications will be released to the public (on or around 1 May 2012). From this time, anyone can make an informal comment which will be publicly posted. Comments made within 60 days may be considered in the initial evaluation of the application. We do not recommend this option because there is no guarantee that a comment made will be taken into account (comments must relate to the evaluation criteria, which does not include criteria for trade mark infringement) and any comments made will be visible by the public and the applicant.
How can McCullough Robertson help?
If you are interested in protecting your brand name from being used as a gTLD, we recommend you choose a watching service or apply for a gTLD. If you would like us to monitor the application process for any potentially infringing marks, please contact us and let us know which trade marks you are interested in protecting. We can also further assist you in the future if you wish to lodge an objection. If you wish to apply for a gTLD in this round, please contact us as soon as possible ahead of the 29 March 2012 deadline.
If you wish, we can keep you informed of updates on the Clearinghouse and assist with applying to register your trade mark. We can also assist if you wish to make an application against a potentially infringing domain after the delegation process is complete.
We can also review your existing portfolio and provide recommendations, should you require this.
Focus covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. Focus is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.