David Franklin, Special Counsel in the Trade Marks team discusses the new types of domain names and the impacts on your trade mark rights.
There has been a great deal of news recently about new types of domain names. Some of these may have an impact on your trade mark rights.
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Anything after the dot! New “generic Top Level Domains”

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

“Domains” are the words or letters after the dots in your domain name, e.g. “.com” or “.au”.
Top level domains are the ones at the right hand end of a domain name. The most well known and widely used gTLD is of course dot com (“.com”), and there are a number of others including “.net”, “.biz”, “.org”, and the more recent “.co”.

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

Not everyone will easily be able to do this even if they wish to. The initial application fee for a new gTLD is US$185,000 and there are numerous stringent requirements to be met, including, in the case of a gTLD comprising a trade mark, an obligation to prove entitlement to use the trade mark as the Domain.

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

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

How popular will this expansion of gTLDs be? 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 does it impact on 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 to some - theoretically every time a new gTLD relevant to your business is introduced, you may have to consider registering a new domain name under that gTLD, e.g. if you are 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 cybersquatting or there is potential for a competitor or distributor 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 is likely that many of the gTLDs that will be in demand are generic names of types of business or industry, e.g. .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 given the opportunity to begin registering domain names under its gTLD.

Potential for conflict

What else does this mean for trade mark owners? 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, e.g. crown.com or crown.com.au, but now an organisation may establish a “.crown” gTLD.

This may not be too much to worry about, but it can create a dilemma for some – is the new gTLD of any appeal to marketing your business and do you want to register a domain name with that new gTLD, e.g. crown.crown or perhaps crownaustralia.crown? What about australia.crown – who would be entitled to that? 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?

All of this causes a potential administrative headache and additional cost to business. However most businesses simply need to be aware of the issues, and 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.

The latest gTLD - “.xxx”

The introduction of the latest gTLD, .xxx, aimed at the adult industry, causes another (hopefully minor) dilemma due to what it signifies and 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. There is little risk for the majority of brand owners - if you have a trade mark which a .xxx operator or cybersquatter would not want in its wildest dreams, e.g. ARROW TRANSPORT, this is not likely to be an issue.
There was a 'Sunrise period' from 7 September to 28 October 2011 to allow trade mark owners to reserve their trade mark in the .xxx space (e.g. 'yourtrademark.xxx') to avert the risk of a third party registering it themselves. Following that there was a short 'landrush' period for interested parties to grab any remaining 'in-demand' domain names that were still available. After the landrush, registration of .xxx domain names becomes available to all. This should enable you to still register a .xxx domain name containing your trade mark as a blocking strategy if you think your trade mark is vulnerable. Note however it is likely to be a “first in first served” system and that the risk remains (small though that it may be) of a third party registering an identical domain name before you.
For more information regarding this topic please contact David Franklin.