ICANN, the body that oversees the domain name system around the world, announced some time ago an ambitious expansion of its generic Top Level Domains (gTLDs) system.

Domains are the letters after the ‘dots’ in your web address, e.g. ‘com’ or ‘au’. Top level domains are the ones to the immediate right of the web address. The most well known and widely used gTLD is of course ‘.com’, while ‘.net’, ‘.biz’ and ‘.org’ also hold their own.

ICANN’s plan allows the establishment of new gTLDs using any name or word, including trade marks. A person may, on application to ICANN, set up a new gTLD registration system for any name or combination of letters they wish, for example ‘.taxi’ or ‘.cocacola’.

There is a catch

The initial application fee for a new gTLD is US$185,000 and there are numerous stringent requirements to be met. In the case of a gTLD comprising a trade mark, for example, an obligation to prove entitlement to use the trade mark as the domain is necessary.

This opportunity is likely to appeal to organisations already operating domain name registries and specialist gTLD management companies. Large businesses with a worldwide brand are also expected to enter the gTLD market. There are a number of good reasons to do so, including to help improve rankings in Google and other search engines and consolidating web addresses around the world.

How would it look? Presumably the web address for the main Holden site, for example, would be ‘.holden’, with sub-addresses such as ‘australia.holden’ and ‘nz.holden’.

ICANN says it will allow up to 1000 new gTLDs each year and is expecting there to be hundreds of new gTLDs from 2012 on.

How will the new domains impact you?

ICANN is opening up the gTLD system to such a degree that trade mark owners may have to continually register new domain names, either to actually use as web addresses (the main purpose of a domain name) or to simply stop others registering them first.

This could become prohibitively expensive for some – theoretically every time a new gTLD relevant to your business is introduced, you may have to consider registering a new domain name. For example, if you’re in the jewellery business, ‘yourtrademark.jeweller’. Over time, there may be dozens of new domain names you need to register – especially if you have a trade mark vulnerable to cyber-squatting or a competitor is likely to register a domain name that really should be yours.

Most importantly, trade mark owners should look out for new gTLDs which are directly relevant to their products or services. It’s likely that many of the in-demand gTLDs will be generic names relating to business or industry, eg. ‘.trader’, ‘.airport’, ‘.casino’, ‘.sport’, ‘.entertainment’, ‘.pizza’, ‘.transport’, ‘.finance’.

Depending on the fame or notoriety of your brand, the key is to apply for registration of the domain name you want (yourtrademark.transport), ideally using the ‘sunrise’ period that the gTLD manager must provide to trade mark owners before third parties are allowed in on the action.

Potential for conflict

It is conceivable that someone may establish a gTLD comprising your trade mark. The most common forms of trade marks are made up of names or words, and many name or word marks are widely used by different businesses around the world.

The problem is that a trade mark is registered in respect of specific goods or services, but domain names are not. Take ‘Crown’ for instance, a name used by many traders as a brand name/trade mark all over the world. Not only has there always been the ongoing (although perhaps small) risk of someone else registering the domain name you want to use, eg. crown.com or crown.com.au, now an organisation may establish a ‘.crown’ gTLD.

Is the new gTLD of any appeal to marketing your business? Do you want to register a domain name with that new gTLD? Would the manager of the ‘.crown’ gTLD try to exclude owners of Crown trade marks who are not associated with the business for which that gTLD has been created?

Most businesses simply need to be aware of the issues. If you have never had any problems securing the domain name you want, then this expansion of the domain name system should not be a problem.

On a positive note, a new gTLD could be a real boon to your business and online marketing efforts. If a new gTLD is relevant to your line of business or field of activity, you have the opportunity to get in before third parties and reserve your new domain name, eg. crown.transport, by applying during the Sunrise period. If not, you can simply take your chances with the ‘first in, first served’ system once the Sunrise period closes.

The latest gTLD – ‘.xxx

Introduction of the ‘.xxx’ gTLD, aimed at the adult industry, causes another (hopefully minor) dilemma due to the potential for domain name abuse by cybersquatters or online trouble makers.

Unless a business is in the adult entertainment industry, it may not want to risk a third party registering a .xxx domain name featuring its trade mark. However, this poses little risk for the majority of brand owners – ‘Arrow Transport’, for example, is unlikely to catch the eye of an ‘.xxx’ operator.

The Sunrise period

If you’ve miss the Sunrise period, which ran from 7 September to 28 October 2011, you can register at any time after that.

David Franklin has extensive experience across all aspects of Australian and New Zealand intellectual property law, with particular expertise in trade mark law.