New Top Level Domains including .BRAND coming soon

11 August 2011
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ICANN, the international organisation that oversees the domain name system, has approved processes for new global top level domains (gTLDs) that will enable registration of brands (.KLEENEX), geographical locations (.SYDNEY), communities (.KURD) and generic words (.SPORT) as domains.

From 12 January 2012-12 April 2012, trade mark owners will be able to register their trade marks as top level domains (.brand) but it comes with a hefty fee and the administrative cost of managing the domain. Once this period closes, the opportunity will not arise again for another 3 years.

The initial filing fee of US$185,000 is not refundable if your application is unsuccessful and additional fees may be incurred during examination of your application or if a third party opposes your application. In the event of multiple applications for the same .brand domain, the domain will be auctioned.

Once successful, you will have the ongoing costs of managing the .brand domain and operating a Domain Name Registry of about US$25,000.

Your company will have to become a Domain Name Registrar in order to register and operate a .brand domain. As well as submitting proof that you are entitled to the .brand domain, there is a complicated application in which you must provide various administrative, technical and financial representations to meet the requirements of a Registrar.

As a Domain Name Registry, these costs could be offset by offering secondary domain names to others but otherwise, you can maintain the domain solely for your own use.

One of the requirements of a Domain Name Registrar is to provide a dispute resolution mechanism and means for notifying trade mark owners of any application to register their trade mark as a secondary domain name. This must include a trade mark clearing house operated by an independent party approved by ICANN. These clearing houses will validate claims to trade mark rights and act as a database accessible to Registrars checking for conflicts with trade mark rights. You will be able to submit details of your registered trade marks to such clearing houses so you will be notified of any third party seeking to register your mark as a .brand domain.

Even if you decide not to register your trade mark as a .brand domain, you should register your most important marks with the ICANN clearing houses and consider objecting to any third party domain application for your trade mark.

More information about the different processes and options for protecting your trade marks will be provided as it becomes available.

Tracey Berger
Principal
Spruson & Ferguson
E: Tracey.Berger@sprusons.com.au