By Duncan Jones, Trainee Solicitor, and Simon Bennett, partner, Technology And Digital Group at Fox Williams
On 12 January 2012, the window for applying for a new generic top-level domain name (gTLD) opened. The new system of gTLDs offers any interested the party the chance to register almost any name as a gTLD such as .law, .store or .google.
This offers brand owners a number of opportunities, including:
- Reinforcing a brand's reputation.
- Increasing the visibility of a brand online.
- Creating a trusted space on the web for a brand.
It would be possible to register ‘.brand’, which could then be used to form a number of domain names based on the particular good or service being offered, for example, ‘www.laptops.brand’, ‘www.tablets.brand’, ‘www.software.brand’, and so on.
This would prevent the need to register domain names under various country codes and should reduce the risk of typo squatting.
However, before you rush to complete your application forms, there are some points to consider.
It is not cheap. The application will cost US$185,000, which includes a US$5,000 deposit. There is also the possibility of further fees depending on the nature and complexity of the application. It is thought that maintaining a gTLD would cost approximately US$25,000 per year.
An owner of a gTLD would be required to operate a domain name registry, which would involve being responsible for all the domain names using the gTLD. It would have to operate a dispute resolution policy, similar to the UDRP that currently applies to .com domain name disputes. An obvious cost to consider would be the need to employ skilled technical operators.
The application has deliberately been designed to be onerous, posing no fewer than 50 specific questions. An applicant would need to prove that it has a legitimate claim to run a particular gTLD. This would mean that a ‘.brand’ would be easier to apply for than a type of good or service, for example, ‘.tablet’ or ‘.socialmedia’.
One problem is that someone may steal your brand by registering it as a gTLD. To counter this risk, you should pay careful attention to the list of applications which ICANN will publish on 1 May 2012. The onus is on the brand owner to watch the list for any conflicting applications. However, ICANN is considering implementing a notification service and some brand owners have employed the services of 3rd party monitoring companies. It is possible to object to an application on various specific grounds, one being on the basis of trade mark infringement. However, the real risk is that a generic registry opens such as .tablet and it accepts domain name applications, which will be cheap for domains such as apple.tablet or Samsung.tablet.
All applications for gTLDs must be filed by 12 April 2012. There is clearly a lot to consider before deciding whether or not to make an application. But be aware that if you subsequently seek to make an application (the dates for a second application window are yet to be announced), it is clear that if your application is confusingly similar to a gTLD which is already taken, it will not be permitted.
Duncan Jones is a Trainee Solicitor and Simon Bennett is a partner in the Technology and Digital Group at Fox Williams LLP. They can be contacted on firstname.lastname@example.org and email@example.com.
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