On June 20, 2011, in Singapore, ICANN (Internet Corporation for
Assigned Names and Numbers), the global co-ordination body for
internet addresses, approved the new program for the thematic
extension of GTLDs. This program will certainly lead to significant
growth in the number of domain names (GTLDs) on the internet. This
change will affect all owners of trademarks who will have to weigh
the pros and cons and opportunities and risks they will face under
the new program, which will be officially launched on January 12,
Once launched, the registration of domain names will become
public, and everybody will be able to register a gTLD. To open it
up to the public, ICANN will allow new thematic extensions, which
will no longer be restricted to the existing 22 generic extensions.
They may now consist of geographic domains such as
.switzerland, .canada, .vancouver or even trademarks.
Practically any word, name, trademark or other designation may be
identified with a new specific domain name.
For trademark owners, the issue will then be what procedure and
what rules are to be followed for registering a domain name during
the period before the launch, as well as after the launch, at which
time domain names will become a mechanism that is available to the
general public for registration.
This wave of new gTLDs is an unprecedented situation for
trademark owners. The purpose of the initiative is to increase
competition and the diversity of domain names. The new gTLDs will
increase the number of valid choices for registering personalized
Internet addresses and create new opportunities for branding and
The decision to register will be an expensive one for
businesses, since the costs to file a new suffix application will
be at least $185,000. Also, applicants will have to show they have
a legitimate right to the name and have the technical capability to
operate the new suffix.
At the appropriate time, i.e. between January 12 and April 12,
2012, any organizations and businesses who wish to set up and
operate registry services for such new generic extensions (gTLDs)
must file an application with ICANN. ICANN will then decide which
of such organizations have submitted proof that they have the
necessary technical and organizational capability to operate such a
service. ICANN has made an «Applicant Guidebook»
available on its Internet site. This information package describes
the criteria to be met and procedures to be followed for filing an
application under the new program. The site also provides
information on the taxes that will be charged for the
administration of the applications and disputes.
This therefore means that, once the application period is
completed and the applications have been approved, the Internet
will likely contain hundreds, if not thousands, of new suffixes
representing large brand names, names of cities or regions and even
On a related issue, legitimate trademark owners have the option
of excluding their trademarks from the new ".xxx"
registry, and now is the time to do so. We are currently in the
period prior to the launch which was created to allow businesses
that are not members of the adult entertainment industry to exclude
their trademarks from this registry. Registering a trademark in
this way will block it from appearing in any ".xxx"
registry. The fee for such a filing is quite low and the deadline
for doing so is October 28, 2011.
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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