Originally published June 13, 2012

Today, ICANN announced the list of applied-for new generic top level domain names ("gTLDs"). The complete list can be found here.

The impending expansion of the internet creates a risk to trade-mark owners of increased cybersquatting, brand dilution and infringement, but it may also present an opportunity to further develop their brands and businesses. It is important that trade-mark owners take a proactive approach to these developments.

At present, the internet is made up of about 250 country code top level domain names ("ccTLDs"), such as .ca and .jp, and 22 gTLDs, such as .com, .net and .org. As part of its process to expand available gTLDs, ICANN received a total of 1930 applications for 1409 different gTLDs. With an application fee of $185,000 each, ICANN raised over $350 million US during the application process.

A few noteworthy application statistics include:

  • 230 gTLDs received multiple applications, e.g. 11 applications each for .app, .home, .inc, and seven applications each for .cloud, .hotel, .ltd, .mail, .news and .store;
  • 27 applications were filed by Canadian entities;
  • 84 applications are designated as "community-based";
  • 66 applications are designated as geographical name applications; and
  • 116 applications consist of non-Latin scripts, such as Cyrillic or Japanese.

The new gTLD applications will be placed into batches of about 500 applications for ease of processing. Batching results will be announced on July 11, 2012. New gTLD applications in the first batch are expected to be approved and launched as early as the first quarter of 2013.

Trade-mark owners need to be aware of the process and consider the following steps to protect their brands:

  • Review the list of new gTLD applications in order to identify: (a) gTLDs that could potentially conflict with their trade-mark rights; (b) industry keyword gTLDs (e.g. .bank, .news, .restaurant) that may adversely affect the industry, or be a likely source for cybersquatting; and (c) gTLDs applied for by competitors.
  • Consider participating in the gTLD objection process, including: (a) the legal rights objection process for trade-mark owners to object to gTLD applications that conflict with their rights; and (b) the community objection process for persons to object to "community" gTLDs that may not have the support of the relevant community. The formal objection period runs from June 13, 2012, to January 13, 2013. An open application comment period runs from June 13, 2012, to August 12, 2012.
  • Take advantage of the Trade-mark Clearinghouse, which is a mechanism that allows trade-mark owners to record their registered trade-marks so that they can: (a) participate in pre-registration Sunrise Periods to register their exact marks as domain names in the new gLTDs as they are launched, and (b) be alerted to any new domain registrations in the new gTLDs that are identical to their recorded trade-marks. (Procedures for using the Trade-mark Clearinghouse are expected to be published in September/October 2012 and we will provide more details at that time.)

For more details relating to protecting your brands in the new gTLDS, or if you are considering a formal objection, please contact Daniel M. Anthony or Elliott S. Simcoe in our Ottawa office, Mark K. Evans in our Toronto office, Christian Bolduc in our Montreal office, or Michael D. Manson in our Vancouver office.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.