gTLDs: Brand owners should check domain suffix applications

gTLDs: Brand owners should check domain suffix applications


Author: Jo Joyce

For years, internet users have been used to typing into their browsers domain names ending with relatively few suffixes, of which .com has been easily the most common.

Although there are many national level suffixes (such as until now there have been only 22 international generic top level domains (gTLDs), including .com, .net and .org.

However, the face of the internet is set to change forever, as the International Corporation of Assigned Names and Numbers (ICANN), which controls the internet domain name system, has released details of the hundreds of applicants for new gTLDs.

After years of heated debate, ICANN voted to allow thousands of applications from organisations wishing to own and run new gTLDs.

The new suffixes must have at least three characters, and many are place, brand or company names. Applications were also allowed for suffixes in non-Roman alphabets such as Mandarin, Japanese or Cyrillic, though most received so far are in English.

Who has applied and why?

The application process was both expensive and flawed, leading to significant delays, but ICANN has now published a list of the applications received and will allow for objections from interested parties.

Many commentators have expressed amazement that any organisation would pay the $185,000 fee just to apply for ownership of a gTLD (whether or not they ultimately succeed in obtaining the suffix) and undertake the arduous application process before they can use or licence domain names incorporating that gTLD, when they could simply stick with their existing .com address.

Once ICANN has granted an applicant rights over a suffix, its new owner will face high and ongoing costs to administer the gTLD.

Some of the published applications are clearly from registrar companies who will make available domains using their new suffix, in the same way as it is currently possible to buy a .com or site.

Many of the applications come from large international brands some of which are seeking a domain incorporating their company name (such as .apple, .google and .mcdonalds).

Some companies have sought to register multiple suffixes for a number of brands or products. For example, Amazon has sought to obtain .kindle, .audible and .book as well as .amazon.

For multinationals, a company branded suffix, whilst not strictly necessary does represent a neat way to contain a diverse group of national companies under a single corporate identity.

There have been a few interesting and unexpected applications including a number from religious organisations, a Vatican body has applied for .catholic, while the American Bible Society has applied for .Bible.

ICANN recently stoked controversy by confirming that it would not automatically restrict applications for suffixes on a financial theme, and there are in fact a number of applications relating to financial services including numerous applications for .bank.

In some cases more than one application has been received for the same suffix, including no fewer than 13 applications for .app. In such cases, where all of the applicants have a legitimate claim, ICANN will place that gTLD up for auction.

Is it possible to object?

Given the high cost of applying for a gTLD, it is unlikely that there will be many objections based on accusations of domain squatting (where a party registers a domain name containing a company or organisation's name or brand, with the intention of effectively holding it to ransom and demanding large sums of money to transfer ownership of the domain).

It is possible to object to the granting of a gTLD on a number of grounds:

  • the applied for suffix is confusingly similar to an existing one
  • the use of the applied for suffix would infringe intellectual property or other rights
  • the applied for suffix would go against accepted standards of public order and/or morality
  • there is a substantial objection from the part of the community that the suffix is targeting

What should I do?

Anyone can comment on an application until 12 August 2012 and comments will be considered by the evaluation panel for applications.

The window for formal objections (for which a fee must be paid) will stay open until 13 January 2013. Once an objection is received the applicant to which it relates will have 30 days to respond.

Trade mark and brand owners should check the published list of applications carefully and prepare to submit a formal objection, or at least informal comments, if they fear that the grant of one of the applications would infringe upon their intellectual property rights.