New Generic Domain Name Extensions Create Opportunities and Headaches

Monday, 20 October 2014

The Internet Corporation for Assigned Names and Numbers (ICANN) is in the process of introducing new generic-top level domain names (gTLDs).  In addition to the existing top-level domains such as '.com' and '.net', businesses are now able to register domain names with extensions such as '.clothing' and '.technology'.  A large number of these domain names have already launched, with the potential for hundreds more to appear over the course of the next few years.

gTLDs launched so far are many and varied, and include:

  • generic extensions, such as .email and .international;
  • industry-specific extensions, such as .construction, .education and .holiday;
  • geographic extensions, such as .london and .melbourne;
  • extensions using foreign character sets, such as .онлайн (Russian for 'online') and .网络 (Chinese for 'network'); and
  • novelty extensions, such as .ninja, .cool and .fail.

As many who have tried to register domain names would attest, the overwhelming popularity of traditional namespaces such as .com and .com.au has resulted in the near-exhaustion of practical, pertinent domain names with these extensions.  The new gTLDs significantly broaden the scope of domain names available, potentially providing relevant and unique web addresses to new and existing businesses.  Domain names are one of many factors considered by search engine ranking algorithms, leading a large number of commentators to speculate that a relevant gTLD domain name may have a positive impact on a website's search result performance.

Even if not interested in using new gTLD domain names, we recommend that brand owners (including government officials who need to protect the branding of programs) take steps to register relevant domain names, in order to prevent them from being acquired and used by competitors or other third parties.  We have observed a large degree of cybersquatting activity in relation to new gTLD extensions.  For example, ibm.guru and ibm.ventures were registered by an individual from New Jersey.

Pre-registration

Trade mark owners are able to take steps to pre-register domain names corresponding with key brands before they become available to the general public.  Each gTLD launch will include a Sunrise period, where domain names can only be registered where they correspond exactly with registered trade marks.

We have helped a number of our clients successfully pre-register domain names during Sunrise periods for a range of gTLDs, to prevent them from ever becoming available to third parties.  The cost of doing so is likely to be substantially less than fighting a cybersquatter later.

Complaint Mechanisms

In the event that cybersquatters do manage to take hold of a relevant domain name, processes are available for trade mark holders to take action in relation to improperly registered domain names.

The Uniform Domain Name Dispute Resolution Policy (UDRP) which has applied in relation to other top level domain names also applies in relation to these gTLDs.  The UDRP allows trade mark owners to apply for the cancellation, suspension or transfer of domain names registered and used in bad faith.

A new Uniform Rapid Suspension scheme (URS) also applies to new gTLD domain names.  This was designed to provide trade mark owners with a cheap and quick procedure to have infringing domain names suspended.

IBM has become one of the first parties to use the URS, and has successfully had the ibm.guru and ibm.ventures domain names suspended.

New Extensions Launched to Date Include

.accountants
.beer
.bike
.boutique
.builders
.camera
.capital
.care
.careers
.cash
.catering
.center
.cleaning
.clinic
.clothing
.coffee
.company
.computer
.construction
.contractors
.credit
.creditcard
.dating
.dental
.digital
.education
.email
.engineering
.enterprises
.equipment
.estate
.events
.expert
.farm
.finance
.financial
.fitness
.flights
.florist
.fund
.furniture
.healthcare
.holdings
.holiday
.house
.industries
.institute
.insure
.international
.investments
.land
.lease
.lighting
.limited
.loans
.marketing
.media
.photography
.plumbing
.productions
.properties
.pub
.recipes
.rentals
.repair
.restaurant
.services
.shoes
.solutions
.supplies
.support
.surgery
.systems
.tax
.technology
.toys
.training
.university
.vacations

For further information please contact:

Partner | Adelaide
P +61 8 8205 0580
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Partner | Adelaide
P +61 8 8205 0836
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Partner | Brisbane
P +61 7 3002 6738
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Partner | Canberra
P +61 2 6151 2181
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Stuart Imrie    
Partner | Canberra
P +61 2 6151 2186
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Partner | Canberra
P +61 2 6151 2187
Partner | Melbourne
P +61 3 8644 3408
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Partner | Sydney & Norwest
P +61 2 9334 8481
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John Gray   
Partner | Sydney
P +61 2 9334 8538
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Veronica Jumeaux  
Partner | Perth
P +61 8 9420 1514
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For further information on our Intellectual Property and Trade Marks Group click here.

Important disclaimer: The material contained in this publication is of a general nature only and is based on the law as at 20 October 2014. It is not, nor is intended to be, legal advice. If you wish to take any action based on the content of this publication we recommend that you seek professional advice.