We’re joined by Jurgen Bebber, who’s a Principal in the National Trade Mark Group and heads up the Domain Name Disputes Group at Griffith Hack and joins us from Melbourne.  Jurgen welcome back to BRR Media.

Hello Kate.

Well Jurgen last week we saw that ICANN released the list of new top level domains that have been applied for; can you run us through I guess some of the major applicants and some of the some of the top levels that they did apply for?

Yes certainly.  I’m looking at the list right as we speak, about 1,930 applications, of those applications 116 are internationalised domain names, those are domain names that are in non-latin scripts and then we have about 66 geographic domain names, we have the majority of the domain names are standard applications and then we have a couple of community based applications.  The applicants that stand out by far are Amazon with 76 applications and the other two are Charleston Road Registry and Top Level Domain Holdings that each hold quite a vast number of applications.  Bearing in mind that each application costs a flag fall of US$185,000 is quite an achievement there.  Now some of those domains held by – or applications held by those companies are generic domain names and others are branded.  So Amazon for example applied for “Amazon” but it also applied for “Book”.

Okay and will those applicants automatically receive their nominated top level both for the branded ones and for the more generic, say Book, as you mentioned with Amazon?

It all depends on a number of factors that will now be evaluated in this next period.  ICANN will look at each of the applications and determine whether they are acceptable, whether they are of a nature that won’t destabilise the domain names system, and they will also look at whether other applicants applied for the same string, if no such cases has occur ie if the registry operators such as Amazon have shown that they have the technical and financial capability to run a registry and if no other party applied for the identical string then those domains should be accepted and delegated to the root probably early next year.  But I can see that there are quite a number of companies that have applied for the same string, for example Amazon applied for dot cloud, but so did Symantec, so did Top Level Domain Holdings, so did Charleston Road Registry and so forth, so there’s quite a few applicants for dot cloud.  What will happen there is that each of those applications will still go through the initial evaluation period but thereafter there will be some negotiating between the parties as to who will be the successful applicant and if I think those negotiations don’t go anywhere then there will be an auction.

Okay so potentially a bidding war.

Potentially.  And potentially a very expensive exercise as well for the applicant.

Yes certainly.  Okay well what about those companies that may not have applied for a top level domain, but then you know have a look at the list and they see that some of the applications might breach their trading mark, what should they be doing?

Well they should be considering objecting to those applications and there is a mechanism within which they can do that.  The World Intellectual Property Organisation has been nominated the entity to deal with such complaints, they are fairly well known in their dealings with domain name disputes generally, they have taken on this role in this process.  You have around seven months within which to object, so trade mark owners do have a little bit of time but I would recommend that trade mark owners go through this list of 1,930 domains and see whether any of those domains are similar to their trade marks.

Okay when the top levels are granted, will the holders of the top levels be able to refuse, say their competitors who may want to register a domain name with them in the coming months?

Well as I understand it each registry will be able to operate the registry as a private company.  They can make up the rules subject to a few rules that ICANN has set itself.  I can’t see at this stage that there is a rule that you need to sell domains to anyone and I think that is probably the correct way to go about things.  I certainly expect that the branded domain names will be closed registries ie domains will only be available to people within the company.  I can also see this happening with some of the generic names held by companies for example there was L’Oreal owned Beauty I think it was, yes there we go L’Oreal owns Beauty and Hair as well.  So it’s possible that L’Oreal will open this up to third party registrations and certainly if they wanted to make money off this top level they would do so but there is also some value in keeping it to themselves.

Yes certainly.  And Jurgen just finally we’re running out of time, but what are the key things companies should be doing over the next few months?

Well there’s two things they should be doing, the most immediate thing is look through the list to determine whether any of the strings are similar to trade marks that trade mark owners hold and if so to perhaps consult somebody as to whether an objection can be filed and the second thing that I think trade mark owners should be doing is looking through the list and batching all the generic domains into those that they would like to see their trade marks filed in and those that don’t really matter that much.  And those generic domains that are of importance I would recommend to register their domains in those.  But that won’t happen until early to late 2013.

Okay so a little bit of time but some good tips for business there.  Jurgen thank you so much for joining us again on BRR Media.

Glad to be back, thank you.

That was Jurgen Bebber, who’s a Principal at Griffith Hack.  Now listeners if you have any questions for Jurgen you can send them through either using the panel on your screen or of course by sending an email to law@brrmedia.com.