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 procedures.
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 becomes clearer.
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.
.xxx TLD
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.
Our experience
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.
