Summary and implications

On 19 September 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) released its Guidebook to one of the biggest changes in Internet naming history. From January to April 2012, businesses will be able to apply for their own generic Top Level Domains (gTLDs) such as .APPLE, .GOOGLE, .BANK or .SHOP.

With the costs for applicants expected to reach a staggering $1m in the first three years, few but the very largest organisations are likely to seriously consider submitting an application. However, the implications of the new gTLD programme go far beyond the global giants… all brand owners should be preparing to:

  • Object to applications for gTLDs that are confusingly similar to their trade marks;
  • Register their trade marks in the proposed Trademark Clearinghouse to have early warning of applications for identical second level domains; and
  • Make defensive applications to register core brands as domain names in relevant gTLDs.

Protecting your brand in the Trademark Clearinghouse

ICANN’s Guidebook specifies dispute resolution procedures for a formal objection to a gTLD application. Brand owners will look to review applications when a list is published in April 2012 and consider objections on their merits.

In addition, new gTLD operators must run specified trade mark protection services:

  1. Prior to the launch of a new gTLD; and
  2. During the initial period when domain name registrations within the gTLD are made available to the general public.

A database of trade marks, held in a central “Trademark Clearinghouse” will support those trade mark protection services. The Clearinghouse gives trade mark owners the opportunity to make their rights known at an early stage. Trade mark owners can register national or regionally registered word marks, word marks validated or protected by a court, statute or treaty and “other marks that constitute intellectual property”.

Brand owners will have to pay to register their trade marks on the Clearinghouse database, although it is not yet clear what the costs will be or when registration will begin.

It is mandatory for gTLD Registries to consult the Clearinghouse during their pre-launch Sunrise application period and for at least 60 days post launch. During Sunrise, rights holders will be notified of anyone applying to register a second level domain name considered to be an “Identical Match” with the mark on the database. This would not give brand owners protection from phonetically similar or “marks contained” applications, but spaces, hyphens, punctuation, underscores and special characters are all omitted in the assessment.

Registration on the database will also ensure that an applicant for a second level domain name during the initial 60 day launch period is notified of the existence of a brand owner’s rights in a name identical to the domain name applied for. The applicant is then required to sign a warranty stating that, to the best of its knowledge, the registration and use of the requested domain name will not infringe on the brand holder’s rights. If the applicant goes through with the registration anyway, the brand owner will be notified and will then be able to object to the application. This may either be a standard UDRP complaint or through a new slim line rapid suspension system (URS).

The likely take up of the new gTLDs is difficult to call. ICANN predict 500 applications, but only two brand owners – Canon and Hitachi – have so far declared a clear intention to apply. A number of regions and cities such as London and Berlin are also front runners. Of greater concern to brand owners will be generic names like .BANK, .SHOP, .WEB and .SITE.