Clayton Utz Insights

21 June 2012

Australian Top (Level) 40!

By Melanie Keith and Deborah Polites.

Key Points:

The applicants for new generic top level domain names have been publicised, so companies should consider whether they have any objections

As we reported last year, the Internet Corporation for Assigned Names and Numbers (ICANN) decided to expand the range of generic top level domain names (gTLDs). This will change the internet landscape by enabling companies and organisations to replace generic domains such as .com or .org with their own domain name extensions.

Earlier this year, ICANN began accepting applications for new domain name extensions for new categories such as brands or products (eg. .coke), geographic regions (eg. .london), community (eg. .rugby) and generic terms (eg. .fashion).

Securing a new gTLD is a substantive investment for a company or organisation. An application costs US$185,000 and an annual fee of US$25,000, and applicants also need to establish that they have the ability to run a domain registry. An investment at this level is only warranted where the organisation sees significant value in having the top level domain name extension.

On 13 June 2012, ICANN published the full list of applications for new domain name extensions. Now ICANN will evaluate these and there will be n opportunity for organisations to object to the applications. Among the 40 applications by Australian organisations are applications from banks, financial institutions and universities. The majority of the 40 applications are for branded domain name extensions such as .sbs and .iinet. There are also some applications for generic terms. Tennis Australia has applied for .tennis and Open Universities Australia Pty Ltd has applied for .study and .courses.

Initial evaluation

ICANN has announced that it will process the applications for new gTLDs in batches of 500 (as it received 1,930 gTLD applications and it is not possible for it to evaluate and process all applications at once). It will announce the first group of applications to be processed on 11 July 2012. ICCAN will then undertake an initial evaluation of the first batch of gTLDs applied for.

As part of this process, ICANN will review the gTLDs to determine whether a gTLD applied for is too similar to another application, whether it meets certain technical requirements and whether the gTLD is a geographic name.

ICANN will also evaluate the applying organisation to determine whether that organisation meets the required operational, technical and financial capabilities to run a domain name registry.

ICANN will reveal whether applications have succeeded or failed some time in January 2013. It has not announced when it will process the second batch of applications.

What you can do

Between 13 June 2012 and 12 August 2012, interested parties will have the opportunity to raise concerns about an applied for gTLD. Comments submitted during this two month window may be considered by ICANN as part of its initial evaluation. However, comments will not be considered a formal objection and will not block an application from being evaluated.

During a separate seven month period that ends on 13 January 2013, parties with grounds to oppose will have the additional opportunity to file formal objections (for a fee) against specific gTLDs on one of four objection grounds, ie. that the applied for gTLD:

  • is the subject of substantial opposition from a significant portion of the community that the gTLD is targeting; 
  • is confusingly similar to an existing TLD or to another applied-for gTLD string;
  • violates the legal rights of the objector (eg. a trade mark right); or
  • goes against generally accepted legal norms of morality and public order that are recognised under principles of international law.

The "legal rights" objection will permit trade mark owners to file objections on the basis that the proposed gTLD would infringe their existing trade mark rights. Brand owners should review the ICANN website to determine whether they have a concern about an applied for gTLD and, if so, file an objection before the deadline.

 

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For more information, contact...
Email: Melanie Keith, Lawyer
Tel: +61 3 9286 6526
Email: Deborah Polites, Special Counsel
Tel: +61 3 9286 6958
Disclaimer
Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this bulletin. Persons listed may not be admitted in all states and territories.
Melanie Keith
Melanie Keith