The Internet Corporation for Assigned Names and Numbers (ICANN)
recently voted in favour of accepting applications for new
top-level domain (TLD) extensions beginning January 12,
2012. There are currently 22 generic TLD extensions
(including .com, .net, and most
recently, .xxx), but ICANN's announcement
means that TLDs may eventually number in the hundreds as cities,
corporations, industry groups and others apply for custom
extensions, such as .toronto or
The expected explosion of TLDs will have important implications
for brand owners, not only in terms of providing businesses with
new opportunities for branding online, but also in terms of
providing cyber squatters with new opportunities to commandeer the
trademarks of others as domain names. Here are the basics as
currently envisioned by ICANN...
WWW . STORE . BRAND — Your brand on
the top level
Choice of TLD: ICANN's announcement means that
businesses will soon be able to create TLDs incorporating their
brand names. However, the new TLDs will not have to be
trademarks. There will be few limits placed on an
organization's choice of extension, the main exception being
that no two TLDs can be so similar that they risk confusion.
If two or more applied-for TLDs are deemed confusing by ICANN, the
conflict will be resolved by way of auction if
Eligibility: Corporations and organizations will
be able to apply for a new TLD (individual and sole proprietorships
will not be eligible). However, applicants will have to
demonstrate the technical and financial capability to operate a
TLD. Applying for a TLD will also be a complex and expensive
process, meaning that eligibility will be narrowed in
The Cost: The initial filing fee for a new TLD
will be USD $185,000. Additional fees will arise over the
course of the application process, with the total cost for a new
extension potentially reaching USD $500,000 or more by some
The Timeline: Applications will be accepted from
January 12, 2012 to April 12, 2012. The new TLDs are not
expected to go live, however, until the end of 2012. In the
event that a business misses this initial application period, ICANN
hopes to launch a subsequent round of applications by April
Preserving Trademark Rights: Applications for new
extensions (as opposed to domain names applications,
discussed below) will be opposable on a number of grounds,
including that the applied-for TLD infringes on the objector's
registered or unregistered trademark. Dispute resolution
service providers (to be named) will consider several factors in
assessing trademark objections, including whether the proposed TLD
is likely to create confusion, and whether the applicant was aware
of the opponent's mark. If a confusingly similar TLD does
launch and its operators engage in abusive conduct, brand owners
will also be able to file complaints resulting in penalties up to
the termination of the TLD.
WWW . BRAND . STORE — Your brand on
the second level
Implications for All Brand Owners: A major
implication of ICANN's decision to allow custom TLDs is that
every time a new TLD is created, unscrupulous parties will have
another opportunity to register domain names incorporating the
trademarks of others (e.g. brand.entertainment;
Sunrise Periods: In order to combat infringement,
all new TLD operators will be obliged to conduct sunrise periods,
giving brand owners an opportunity to register marks as domain
names before a given TLD goes live. Eligible participants
will include registered trademark owners providing proof of
use. If a brand owner wishes to exclude its mark from all new
TLDs, it will have to participate in each new sunrise
The Trademark Clearinghouse: To help brand owners
participate in multiple sunrise periods, ICANN plans on
establishing a trademarks clearinghouse that will authenticate
brand owners' registrations and act as a repository for their
proof of use. TLD operators will be able to refer to this
database when conducting their respective sunrise periods.
Brand owners who file claims with the clearinghouse will also
receive notice whenever a domain identical to their mark is
registered during the launch of a new TLD.
Trademark Rights Post-Launch: Following the launch
of a new TLD, ICANN is planning to implement an expedited complaint
procedure to suspend identical or confusingly similar domain
names. The owners of registered trademarks that have filed
evidence of use with the trademarks clearinghouse will be among
those able to avail themselves of this procedure. A complaint
mechanism will also be available whereby brand owners will be able
to report TLD operators that consistently permit third parties to
register infringing second-level domain names.
ICANN is still developing its new TLD policies.
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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