On 20 June 2011, ICANN voted in favour of implementing the new
gTLD program, which we reported on in an earlier
eAlert. Applications for new gTLDs will be accepted from 12
January - 12 April 2012.
With the timeframe announced, brand owners should consider
strategies to take advantage of the new opportunities gTLDs offer,
and to prevent domain name abuse of their brand rights.
In order to register a new gTLD, the applicant must establish it
has reputable standing, the technical and financial capability to
run the new gTLD (as the applicant will become a domain name
registry), and the ability to pay the costly application fee of
US$185,000 and ongoing subscription and transaction fees of about
US$6,250 per year. The application fee alone should almost entirely
prevent opportunists from cyber-squatting new gTLDs.
For brand owners, of more immediate concern is the process to
prevent infringing use of registered trade marks in the new gTLDs.
Infringement could occur with the new gTLD itself (.middletons) or
for second level registrations (middletons.law). All new gTLDs must
offer a mechanism to protect the holders of trade marks rights.
They must also ensure that registrants are subject to the UDRP
A Trademark Clearing House will be established to allow trade
mark owners to lodge their trade marks so that they can be notified
if another party applies to register a gTLD which features the
registered trade mark. This process and the associated costs have
not yet been established by ICANN. We will report again later in
the year when the protection of trade marks in the gTLD landscape
In the meantime, it is imperative you ensure that your trade
marks are registered, as only registered trade marks can be filed
with the Trademark Clearing House.
The recent introduction of the controversial new .xxx TLD,
intended to serve as an internet "red light district",
creates further risk for unprepared brand owners as a third party
could register brand.xxx and tarnish a brand's image.
Registration for names under .xxx will be administered by ICM
Registry, with registration open to members of the adult
entertainment industry and those supplying related products and
services. Due to concerns raised by trade mark owners, ICM will
hold an initial "Sunrise" phase allowing trade mark
owners from outside the adult entertainment industry who do not
want to register a name with the .xxx extension, but would like to
block others from registering the name, to pay a fee to register
the domain name so that it is blocked from use.
The Sunrise phase is expected to start in September 2011 and
last for 30 days. The one-time fee for registration in the phase is
expected to be between A$200-A$300.
Please contact us if you wish to discuss either the new gTLD
regime or the .xxx TLD.
For the past decade, Middletons has been involved with domain
name and internet disputes, including disputes under the UDRP and
auDRP systems, infringing products sold online and more recently
disputes concerning Google AdWords.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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