6 December 2012Trademarks

Google drops three gTLDs, loses $166,500

Google has withdrawn three of its applications for new generic top-level domains (gTLDs) because they matched three-letter country codes that cannot be registered under the programme.

The applications for .and, .est and .are corresponded to codes on the ISO 3116-1 alpha-3 standard that represent Andorra, Estonia and the United Arab Emirates, respectively. The codes were protected by the Internet Corporation for Assigned Names and Numbers (ICANN), which administers the programme.

The withdrawal means Google has lost 30 percent of each individual application fee—set at $185,000—meaning a total of $166,500.

“Either they didn’t do their homework properly or they weren’t advised very well,” said Jonathan Robinson, chief executive of IPRota, a company that advises companies launching TLDs.

The Internet company applied for the second-highest number of gTLDs—101—including .google, .android, and .youtube. But ICANN’s online application system did not recognise or block names matching those on the ISO standard, meaning Google was not necessarily aware they were protected. The system did filter out other protected names such as .icann and .example.

Robinson said it was “very surprising in a programme of this magnitude” that there was no automatic system for checking the geographic names. “This was a published list, and checking applied-for names against it would have been similar to how domain registries perform availability checks in their line of work.

“If I were Google, I would be tempted to argue for a full refund,” he said.

Asked for his thoughts on what the three gTLDs might have been used for, Robinson said they were probably a work in progress. “My impression is that Google can afford to speculate, make a wish list and go for it. I’m sure there were concepts around each one: they’re in a good position to know what Internet users want from a new TLD.”

Another bid, for .ksb, has been been withdrawn by KSB, a German manufacturer of “pumps, valves and systems”. The name did not match any of the protected three-letter country codes or any other reserved name, so the motives behind the decision are unclear.

At least three other bids are “in the process” of being withdrawn, ICANN’s Kurt Pritz said during a webinar on September 6. Pritz, who is charge of the programme, added that ICANN has received 57 requests to change applications. These changes can range from correcting mistakes in the application itself to typographical errors on the applied-for name (one applicant has applied for .dotafrica, as opposed to .africa, and is believed to have submitted a request).

He also said that a “large number” of applications can expect to receive at least one “clarifying question”—further questions the evaluators require to score parts of an application.

Pritz said he expects ICANN to begin delegating the first 1,000 gTLDs in the “late third quarter” of 2013, six months later than expected.

Google did not respond to a request for comment.

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11 December 2012   Rights owners should begin developing their enforcement strategies for protecting their marks in the new generic top-level domain space, Microsoft attorney Russell Pangborn has warned.