Jul 22 2011

Recently, the Internet Corporation for Assigned Names and Numbers (“ICANN”) voted to accept applications for new top level domains (“TLDs”). Such applications will be accepted between January 12, 2012 and April 12, 2012. The recent ICANN vote means that corporations or organizations may apply to register a generic term, such as .food and .law as a TLD. Alternatively, a corporation or organization may apply to use a trademark as a TLD.

The initial fee for establishing a new TLD will be US $185,000.00. Further costs will arise during the application process. Applicants will have to demonstrate both the technical and financial ability to operate a TLD.

The resulting proliferation of new TLDs may result in significant headaches for brand owners. There will be measures available to brand owners who wish to protect their rights. For example, if a proposed TLD infringes on a brand owner’s registered or unregistered trademark rights, the application will be opposable. Additionally, if a TLD launches that incorporates a confusingly similar trademark, brand owners may file complaints if the owner of the TLD abuses its rights.

Another scenario for brand owners to consider is the possible registration of a domain name incorporating a new generic TLD and the brand owner’s trademark (i.e. ridoutmaybee.law). To limit such conduct, all new TLD operators must establish a “sunrise period” before registration of domain names commences, during which brand owners may register trademarks as domain names. Because there will be a sunrise period for each new TLD, ICANN will establish a “trademarks clearinghouse” through which brand owners may register their trademarks. The resulting database will be available to TLD operators while they conduct their sunrise periods. Once a new TLD is launched, ICANN will implement an expedited complaint procedure to challenge domain name registrations. Brand owners that avail themselves of the trademarks clearinghouse will have access to the expedited complaint procedure.

Please contact us if you have any questions regarding new TLDs.

This article is for information purposes only and does not constitute legal or professional advice.

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Tags: Domain Names, ICANN, Trademarks