14 June 2012Trademarks

Google and Amazon top the gTLD pile

Google and Amazon have applied for nearly 180 generic top-level domains (gTLDs), setting up several potential battles between the two companies, under a programme set to cause an unprecedented change to the Internet.

Details of all the 1,930 applications for gTLDs were released at a press conference in London on June 13 by the Internet Corporation for Assigned Names and Numbers (ICANN), which manages the domain name system and oversees the gTLD programme.

The programme, designed to increase innovation and competition on the Internet, was approved by the ICANN board in June 2011. In April this year, a technical glitch in the online application system delayed the much-anticipated ‘reveal day’, which attracted applicants, industry specialists and journalists to central London.

Rod Beckstrom, president and chief executive of ICANN, said it was a “historic day for the Internet” and that “a powerful change is coming”.

He revealed that of the 1,930 applications submitted to ICANN, 751 were for contested strings. Because only one business can run a gTLD registry—if ICANN approves its application—there will not be 1,930 new gTLDs on the Internet. ICANN is encouraging parties to negotiate privately over contested domains but auctions may be required to separate them if talks break down.

“With 751 applications involving 230 duplicated names, we are likely to see some horse-trading between applicants with similar portfolios of names,” said Alexa Raad, chief executive of Architelos, a gTLD consultancy company.

Beckstrom said 66 of the gTLDs were geographic names, such as .london, while 116 were so-called internationalised domain names, ie, written in non-Latin alphabets. There were 911 applications from North America, 675 from Europe and 303 from Asia-Pacific, but only 24 from Latin America and the Caribbean and 17 from Africa.

Before the announcement, brand owners had largely kept their plans quiet, with only a handful including Canon, Hitachi and Deloitte saying they would apply. With 101 applications, Google emerged as the leading applicant, and included .google, .android and .gmail on its gTLD wish list.

Online retailer Amazon followed closely, applying for 76 domains that included .amazon, .aws and .circle. Both companies (and others) have applied for generic terms such as .you, .cloud and .app, raising the likelihood that an auction will take place. An auction is seen as the last resort for deciding who should own a contested gTLD. Two or more companies will bid online until a winner prevails.

Other notable brands to apply include Microsoft, Apple—which applied only for .apple—IBM and Sony, while several car marks such as Ferrari and BMW are also on the list.

There were no applications from the world’s three leading social media companies: Facebook, Twitter and LinkedIn. Other major brands such as Coca-Cola and Pepsi also chose to stay away.

In the past businesses have cited high costs as a deterrent to applying: a gTLD application costs $185,000, plus a further $25,000 per year in registry fees for successful applicants.

Mark Owen, head of the intellectual property practice at London-based law firm Harbottle & Lewis, said many brand owners had viewed the whole exercise with “trepidation”. “Already faced with the costs of having to defend their brands against unauthorised uses online and in .coms, they will now have hundreds of new uses to object to,” he said.

However, auditing firm KPMG, represented by David Green at the London event, firmly believes the .KPMG gTLD will be beneficial. “It will provide a secure platform from which to provide digital services,” he said. “It will be our own authenticated space.”

Luxury goods producer Richemont, has applied for 14 gTLDs. The firm’s choices include .cartier, .watches and .love. Stacey King, senior digital and IP counsel at the firm, said: “Brands look forward to this new opportunity and innovation, and want to make sure that our customers can rely on a safe and secure space.”

June 13 was only the beginning of a long road for applicants. A 60-day comment period has now started; anyone can submit comments. A seven-month objection period, under which trademark owners and others can object to applications, also commenced.

“Every organisation, whether they applied or not, needs to participate in the 60-day comment period if they are serious about protecting their online business interests,” said Stuart Durham, head of sales for EMEA at Melbourne IT, a brand consultancy company.

He added: “The challenge that most organisations will face is that there are 1,930 applications to sort through, with tens of thousands of pages of information, and they have to assess these applications and respond in 60 days. That’s a tough ask.”

Beckstrom pointed to “extensive” protection mechanisms for trademark owners, including the Trademark Clearinghouse and the Uniform Rapid Suspension System. He added that brand owners look set to have a greater influence at ICANN, with many brands running their own registries. The first new gTLDs are expected to be live on the Internet during the first quarter of 2013.

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