The new gTLD programme is borne out of a lengthy policy development process. It facilitates greater innovation and choice within the Internet’s addressing system and allows the opportunity to create new digital identities.
Generic top level domains (gTLDs) are the domain suffixes with an extension of three or more characters. They are part of the structure that forms the Internet’s global addressing system, or domain-name system (DNS), and are used to route traffic through the Internet.
In total, there are now 21 gTLDs. These are made up of the original eight: .com, .edu, .gov, .int, .mil, .net, .org and .arpa. Then a further seven were approved in 2000: .aero, .biz, .coop, .info, .museum, .name and .pro. Finally, in 2004, there was an addition of six gTLDs: .asia, .cat, .jobs, .mobi, .tel and .travel.
A ‘.brand’ relates to one part of the new gTLD programme; the introduction of brand owners or organisations being able to manage their own name as a top level domain (TLD) name. This essentially means creating a domain suffix so that the brand name appears after the dot, therefore being .brand, as opposed to a domain name registration where the brand name appears before the dot, e.g. brand.com.
It is expected that there will also be opportunities for community or geographic TLDs such as .paris or .tennis to be created.
There are three options available:
- .brand required for internal use only (internal departments, employees, etc.), therefore not a commercial registry
- .brand used by third parties—communitybased TLDs for industries, collective groups or organisations looking to use it for internal departments, affiliations, approved retailers, etc.
- .community or .geography used by third parties—open TLDs, operated as full commercial registries.
To apply to register a .brand, the applicant must be an established corporation, organisation or institution in good standing.
It should be reiterated that an applicant for a .brand TLD is applying to create and operate a registry business and sign a contract with ICANN.
“A ‘.brand’ relates to one part of the new gTLD programme; the introduction of brand owners or organisations being able to manage their own name as a top level domain (TLD) name.”
All applications will have to meet the objective criteria that will be set out in the applicant guidebook, which is still being finalised. For an application to be successful, it will be essential for the applicant to demonstrate that it has the strong technical and financial capability that is required to run a registry as well as making the commitment to comply with contractual requirements.
It will be possible for a .brand owner to partner with an established registrar and registry-backed operator to meet the technical capabilities required.
Should an applicant not apply in the first round for a .brand TLD, there will be further opportunities in the future. ICANN has indicated that it will announce the timings of future rounds at the same time as announcing the timescales for the first round of applications.
The proposed evaluation fee is $185,000 and is required from all applicants.
The evaluation fee will be payable in the form of a $5,000 deposit submitted at registration and a payment of the balance submitted with the application. ICANN will not begin its evaluation of an application unless it has received the full gTLD evaluation fee by the date and time set out in the final applicant guidebook.
The evaluation fee is set so as to recover all costs associated with the new gTLD programme, and to ensure that the programme is fully funded and revenue-neutral, and is not subsidised by existing contributions from any of ICANN’s funding sources, including generic TLD registries and registrars, ccTLD contributions and RIR contributions.
It should also be noted that there are ongoing fees connected with running a registry for a .brand TLD. As part of the registry agreement with ICANN, there will be two fees. At this stage, ICANN anticipates these fees will be:
- A fixed fee of $6,250 per calendar quarter
- A transaction fee of $0.20 on all future domain registrations and renewals
- Technical fees for running the registry back end
- Additional fees dependent on the type of TLD applied for. Front-end services for open TLD, etc.
Following the application period, all applications will initially be verified by ICANN for completeness. Following this, a comprehensive list of proposed .brand TLDs together with the applicant’s name and all non-confidential portions of the application will be publicised on the ICANN website.
The proposed steps for ensuring adequate trademark protection are as follows:
- Rights protection mechanism
Applicants for new gTLDs will be required to describe in their applications the rights protection mechanism they propose for secondlevel registrations, which must be made public.
- Uniform Domain Name Dispute Resolution Policy (UDRP)
All new gTLDs must ensure that second-level registrations are subject to ICANN’s UDRP, a process that has worked well to protect rights for many years.
- Objection-based process
This will enable rights holders to demonstrate that a proposed gTLD would infringe their legal rights.
- Uniform Rapid Suspension System
The model provides an expedited take-down procedure for clear-cut cases of trademark infringement.
- Trademark Clearing House (see post registration)
Brand owners should note that, currently, there is no intention to operate a notification system to flag potential infringements to brand owners.
Once a .brand TLD is active, there are some further steps that all .brand owners must comply with to ensure sufficient protection is provided to registered trademarks with regard to the registering of domain names on the .brand TLD. At a minimum, these include:
- Either a sunrise period or a trademark claims service during the start-up phases for registration in the TLD
The sunrise period allows eligible rights holders an early opportunity to register names in the TLD. The trademark claims service provides notice to potential registrants of existing trademark rights, as well as notice to rights holders of relevant names registered.
- Trademark Post-Delegation Dispute Resolution Policy (PDDRP)
At this stage in discussions, key participants, including WIPO and the IRT, have suggested that a PDDRP should only afford trademark holders the right to proceed against a registry operator if it has acted in bad faith, with the intent to profit from the systemic registration of infringing domain names (or systemic cybersquatting) or it has otherwise set out to use the gTLD for an improper purpose.
It is not intended that a trademark holder can hold a registry operator accountable simply because it has or knows of infringing domain names within its gTLD.
- Protection of country and territory names in the new gTLD
All new gTLD registry operators are required to provide certain minimum protections for country and territory names, including an initial reservation requirement and establishment of applicable rules and procedures for release of these names.
Any organisation considering applying for a .brand TLD should set up a full project management team to evaluate the opportunities and risks involved to their business.
Key issues to be assessed include:
- Damaging reputation
- Impact on the company’s core business and operational running
- Fees to ICANN
- Total ongoing business management costs
- Internal/external development costs
- Roles and responsibilities when running a registry
- ICANN compliance
- Registry/registrar agreements
- Registry service level agreements (SLAs)
- DNS stability
- Front-end registration system
- API for registrar
- Online growth of brand
- Brand protection
- Competitor advantage.
An organisation should allow a minimum of four months for the planning, evaluating and application process of setting up a .brand TLD. There are a number of companies offering a specialist consultancy service to guide an organisation through the process. This would be right through to submitting an application should the organisation decide that applying for a .brand TLD is the appropriate course of action for them.
A New gTLD Budget was published on October 22, 2010. The main change from the original proposed budget is the deployment costs, which increased from $2.6 to $4 million. Two major additions include funds for non-financial support of applicants as recommended by the applicant support working group and funding for root zone stability efforts.
According to a resolution agreed at the ICANN board meeting on October 28, ICANN has named May 30, 2011 as the planned launch date for the new gTLDs. The next ICANN meeting will take place in Cartagena, Colombia, in December 2010.
The proposed final (fifth) version of the Applicant Guidebook is planned to be released for public comment on November 9. There is expected to be a final version of the guidebook in January 2011. There is a four-month marketing and communication campaign planned to support the launch of the new gTLDs.
Ben Anderson is the domain operations manager at Group NBT. He can be contacted at: firstname.lastname@example.org
This article was first published on 01 December 2010 in World IP Review