TERMS YOU NEED TO KNOW
The “Internet Corporation for Assigned Names and Numbers” (ICANN) is the not for profit organisation (based in the United States) that is responsible for regulating domain names.
“Top Level Domains” (TLDs) are the letters to the right of the full stop in a domain name. This includes generic TLDs (gTLDs) such as “com”, “org”, and “net” and country code TLDs such as “au”, “nz” and “uk”. There are currently twenty-two gTLDs.
“Second Level Domains” (SLD) refer to anything left of the TLD. As an example, in the domain name “techlawyer.com”, “techlawyer” is the SLD.
“Registrar” is an organisation accredited by ICANN to register a SLD under a gTLD (Registrar).
THE NEW DOMAINS
Since 2005, ICAAN has been planning a process to release hundreds of additional gTLDs. Approximately 1,200 new gTLDs are expected to be introduced through the approvals process.
In April 2013, ICAAN began to release approval notifications. In the first batch of approvals, amongst others, “.casino”, “.bank”, “.charity”, “.melbourne” and “.food” have been approved. No date has been annouced for the ability to purchase SLDs from Registrars in association with the gTLDs, but certain commentators have suggested it will be around August 2013.
POTENTIAL ISSUES FOR TRADEMARK HOLDERS
Businesses should keep track of gTLDs that are relevant to their industry so that they can register SLDs that are advantageous for their brands. You can see a list of potential new gTLDs here. As an example, at Rouse Lawyers, we might aim to register “rouse.lawyers” and “rouselawyers.law”. There will inevitably be more than one business with legitimate rights to an SLD in respect of their brand – in that case, the first party to apply will win the SLD.
Further, in releasing the new gTLDs, there is always a risk that people will register domain names in order to on-sell the registration to companies that own brands closely associated with that domain (this is colloquially known as “cybersquatting”).
Under a process administered by ICAAN, brand owners who own trade marks associated with certain domain names will have the ability to take advantage of a “sunrise period”. This will allow trademark owners to register their trade marks as SLDs under appropriate gTLDs before the general public. In order to take advantage of this, trade mark owners will need to record their trade marks with the Trademark Clearinghouse.
THE TRADEMARK CLEARINGHOUSE
ICANN has set up the Trademark Clearinghouse, which allows trademark owners to submit their trademarks to be recorded on a central database. Recording a trademark with the clearinghouse confers two advantages:
- for 30 days the trademark owner will have first right to register its trademark with the Registry for a SLD when it opens; and
- for the first 60 days of a Registry’s launch, if someone attempts to register a SLD name based on a recorded trademark, the trademark owner will be notified and given the ability to object.
According to the latest information, the cost of recording a trademark with the Clearinghouse is $250 per trademark for one year. Three and five year subscriptions are also available.
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