One of the Internet Corporation for Assigned Names and Numbers
(ICANN) approved Domain Name Registries (Donuts
Inc.) has now launched its 60 day Sunrise Period
in respect of seven new generic top-level domains
These new gTLDs will ultimately sit alongside existing domains,
such as .com and .com.au. Donut
Inc has, in fact, applied for several hundred new gTLDs and is
expected to offer many more extensions in the near future.
Businesses trading in relation to goods and services which might be
associated with these extensions may be considering whether to
secure domains in the new gTLD space.
For example, owners of bicycle brands such as MALVERN STAR;
APOLLO and CANNONDALE may be considering whether a .BIKE domain
might be a useful marketing tool moving forward? The official
CANNONDALE website (directed to Australia) is currently located,
for example, at:
Perhaps CANNONDALE might, in the future, also secure and use a
domain in the new gTLD space created by .BIKE, so may have a
website located at:
This .BIKE gTLD may become the "go
to" domain (instead of .com or .com.au) for those
interested in promoting anything related to "bikes" and
for consumers looking for information concerning, or looking to
purchase, bike related goods and services. It is a wait and see
period for the new gTLDs to see if they do re-shape the internet we
have been use to and if so to what extent.
The first pick of domain names within the new gTLDs will be
offered during the Sunrise Period to trade mark rights holders who
have registered their trade marks in the Trade Mark Clearinghouse
(TMCH). The Sunrise Period will end in respect of
the gTLDs we have listed above on 24 January 2014
and the general availability period (when any member of the public
can register domain names in these new gTLDs) will then commence on
29 January 2014.
There have been a number of other interesting developments in
the new gTLD space, including the recent ICANN introduction into
the internet world of the very first new gTLDs, including:
These gTLDs marked the first of a large number of gTLDs that are
in non-Latin scripts. This signified a pivotal move by ICANN to
demonstrate their efforts to create a more globally-inclusive
Internet space moving forward. The full list of officially
delegated gTLD strings can be found on the ICANN website here
This list will be continually updated throughout the delegation
period as new gTLDs come on line and enter the internet world.
What Steps Should Trade Mark Holders Take?
The introduction of the new gTLDs means that trade mark owners
will now be faced with additional opportunities (to secure domains
within the new gTLDs to promote their brands) and new challenges
(to prevent unauthorised use by others in this ever widening
As we have advised in previous articles, trade mark holders need
to validate their trade marks through the TMCH database in order to
be able to seek registration of a corresponding domain name during
any relevant gTLD Sunrise Period. Please contact Karen Hayne or
Ashleigh Fehrenbach of our Addisons team for any assistance in this
Once an unknown concept, and something many thought would not
eventuate given the many issues which needed to be addressed
between the wide variety of stakeholders, the new gTLDs are now a
reality and need to be considered and dealt with in your trade mark
and brand protection and enforcement policies moving forward.
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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