ICANN is expected to announce the first set of successful applications and list of new generic top level domains later this summer. Before the new generic top level domains can be delegated, the applications need to go through an initial evaluation phase and any objections against those applications need to be addressed. In fact, the first decisions on legal rights objections to applications for new generic top level domains were only recently published by WIPO. The generic top level domain applications concerned were .vip, .rightathome and .home.

The first batch of applications for new generic top level domains were accepted from January 2012 to April 2012 and just under 2000 applications were successfully submitted for consideration. The dates of the second batch of applications are yet to be announced

Internet web addresses (or domain names) are made up of various components. The furthest right section of the address is called the top level domain (TLD), for example .com and .uk. TLDs with three or more characters such as .com, .edu and .gov are referred to as generic top level domains (gTLDs). Until recently, unlike the middle section of a web address (the sub-domain), gTLDs were restricted in number but in 2005, the Internet Corporation for Assigned Names and Numbers (ICANN) planned to expand the number of gTLDs by allowing public and private organisations to propose and be granted control over new gTLDs and this was implemented in 2012.

These new gTLDs can be any arrangement of letters (be they Latin, Arabic or Chinese) and numbers. Of course, existing brand names and words with powerful connotations can also be used such as “.nike”. As a successful applicant effectively controls who can use a gTLD, this has created fears that the scheme would be used to infringe intellectual property rights and hold valuable gTLDs hostage. In response ICANN has created a system of appeals and objections and has implemented other measures to address these issues.

Before any applications for new gTLDs are approved and become operational, third parties have the opportunity to file formal objections to such applications and these objections can be made on several grounds including “legal rights” where the applicant’s potential use of its gTLD would infringe third parties’ trade mark rights.  The period for filing objections to the first batch of applications ran from 13th June 2012 to 13th March 2013.

Given the concerns by brand owners and industry organisations that the gTLD expansion will lead to a significant increase in cybersquatting, other measures have also been put in place to allow organisations to protect their brands once the new gTLDs become operational.

The most significant of these measures is the Trademark Clearing House set up by ICANN. Broadly speaking this system aims to help trade mark owners control the use of their trade marks in the sub-domains of the new gTLD domain names and not in the gTLD itself. As explained above, the sub-domain is the middle section of the domain name, for example, the sub-domain in www.shepwedd.co.uk is shepwedd. As each gTLD operator will maintain its own separate domain name registry, it would be difficult to detect infringement of trade marks in sub-domains due to the sheer number of separate gTLDs that the sub-domain could be used with. The Trademark Clearing House attempts to remedy this.

If a trade mark is registered with the Trademark Clearing House, the trade mark owner gets two benefits:

  • Sunrise Period – new gTLD operators will be required to give the trade mark owner a 30 day window in which to register a sub-domain for the new gTLD which matches its trade mark (www.[trade mark].[new gTLD]) before domain names are offered for registration to the general public. This would allow trade mark owners to safeguard domain names that match their trade marks. 
  • Claim Period – the Claim period follows the end of the Sunrise period and lasts for at least 90 days. If a third party attempts to register a sub-domain for a new gTLD in this 90 day period which is identical to a trade mark registered with the Trademark Clearing House, then the applicant and trade mark owner are informed and appropriate action can be taken.

Given that a large number of new gTLDs are expected to go live later this summer, organisations should be considering what measures (if any) they would like to put in place to protect their brands.