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On June 13, 2012, the Internet Corporation for Assigned Names and
Numbers (ICANN) published a list of the 1,930
applications for new generic Top-Level Domain Names (gTLDs) it had
received during its recent January to May 2012 application period.
The influx of applications was due to new rules approved in June
2011 by ICANN, the body which oversees the registration and
coordination of the Internet's system of unique domain
names. The rules transform naming conventions for Internet Web
sites by removing restrictions on allowable suffixes for domain
names. Currently, Web site domain names end in either a country
code (such as .ca or .uk) or in one of only twenty-two gTLDs, such
as ".com" or ".org". Now organizations
can apply to register any character string as a gTLD. This will
allow companies to register their brands as gTLDs or to select
other unique domain names for marketing purposes, drastically
increasing the number of available domains. Applications were
received from sixty countries, including sixty-six requests to
register geographic names as gTLDs, and 116 requests for strings in
non-Roman characters (called Internationalized Domain Names, or
IDNs), such as Chinese, Arabic, and Cyrillic.
ICANN will consider a number of factors when reviewing the
applications. For example, they will evaluate whether a proposed
gTLD is confusingly similar to an existing gTLD, to a reserved
character string or to another proposed gTLD; whether it is a
geographic name requiring government support; and whether it
contributes to domain name system (DNS) instability. They will also
look at whether the applicant possesses adequate technical,
operational and financial resources with respect to the registry
services they will be required to provide.
As part of a public review process, the public will have an
opportunity to comment on proposed gTLDs during the 60 days
following the June 13 posting. Interested parties will also be able
to file one of several types of objections during a formal seven
month objection period. Bases for objection include: "string
confusion", where the proposed string is confusingly similar
to that of an existing gTLD or to another application;
"limited public interest", where an application is
contrary to generally accepted legal norms of morality and public
order; "community", where there is substantial opposition
among a significant proportion of the community targeted by the
proposed gTLD; and "legal rights", where rights-holders,
such as owners of registered or common law trademarks, may oppose a
gTLD which infringes on their legal rights. Trademark owners should
review the list of proposed gTLDs to ensure that none infringe upon
their trademark, and submit comments or file an objection if
appropriate.
The new rules also mean that there is
now a greater variety of domain name extensions which could be used
in combination with trademarks in an infringing way, requiring
continuing vigilance by trademark owners to protect their legal
rights. To help address this concern, ICANN will operate a
Trademark Clearinghouse - a centralized database where trademark
owners can deposit their trademark information in order to support
future infringement claims. The Clearinghouse can also be
used to support Sunrise claims, allowing mark holders to register
domain names in a TLD before the name is available to the general
public.
While marketing opportunities exist for
trademark owners who can afford to invest in the chance to register
their marks as a new gTLDs, the resulting proliferation of new
domain names will present challenges for others. To protect their
marks, trademark owners should monitor applications for gTLDs, file
objections when problems are identified, and register their
trademarks with the Trademark Clearinghouse.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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