Canada: Opposition Window For gTLDs Closing In March, TM Reservation Process Gearing Up

Last Updated: March 5 2013
Article by Reed Taubner


Two important milestones are on the horizon for the domain name system expansion now underway, with implications for brand owners.

On March 13, the opposition period during which brand owners can object to applications for a new gTLD is closing. (A gTLD is the final element of a web address, such as ".com" or ".org"). Brand owners concerned about potentially conflicting gTLDs should review the list of applications available at to assess whether they should commence opposition proceedings.

Regulators are also planning to launch the Trademark Clearinghouse, a central repository designed to help brand owners protect their marks from cyber squatting and other abuses when the new gTLDs come online. Brand owners interested in policing their marks on the new gTLDs should begin preparations for authenticating marks with the Clearinghouse, which is slated to come online on March 26.

OPPOSITION PERIOD (www.domain.gtld)

What is this?

GTLD oppositions are different than other types of domain name disputes businesses have routinely pursued against cyber squatters in recent years. Whereas typical domain disputes involve domain names on the "second level" (i.e.,, gTLD oppositions concern the "top level" (i.e., www.domain.gtld).

The organization responsible for administering the domain name system, ICANN, is currently processing 1,916 applications for new gTLDs, which include both brand names such as *.oldnavy, as well as generic terms like *.wedding. The current opposition period offers concerned third parties the opportunity to oppose the delegation of applied-for gTLDs.

The grounds of opposition:

There are several potential grounds of opposition (e.g., generally accepted norms of morality), but most brand owners concerned about an applied-for gTLD will seek relief on the grounds that the applicant's choice of gTLD violates the brand owner's legal rights, such as its trade-mark rights.

The legal rights ground of objection covers both registered and unregistered trade-marks. A gTLD is considered to violate an opponent's trade-mark rights if it:

  • Takes unfair advantage of the distinctive character or reputation of the opponent's mark;
  • Unjustifiably impairs the distinctive character or the reputation of the opponent's mark; or
  • Otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the opponent's mark.

Oppositions will be administered by the World Intellectual Property Organization (WIPO), and decided by an independent panel. In reaching its decision, the panel will take into consideration many of the factors typically seen in trade-mark confusion analyses, including the degree of resemblance between the opponent's mark and the applied-for gTLD, and the extent to which the opponent's mark is known. The panel will also examine the applicant's intentions, including whether the applicant ought to have known of the opponent's mark, and whether the applicant possesses any legal rights to the mark the applicant has applied-for as a gTLD.  

Procedure and cost:

Opponents must file their objections electronically with WIPO by March 13, 2013, after which WIPO envisions the following timeline:

  • Applicants notified of disputes: Mid-April
  • Applicants' responses due: Mid-May (30 days after receiving notice)
  • Panel decisions issue: August

Oppositions will typically involve a single round of written pleadings, with hearings held only in exceptional cases. The cost of commencing an opposition will generally be $10,000 US per application, due on filing. However, the prevailing party will see $8,000 US of this amount refunded.

It should be noted that while oppositions offer a relatively expedient means of dispute resolution, brand owners are not precluded from attempting to seek relief from the courts.  


What is this?

The Clearinghouse is a protection mechanism available to brand owners that is entirely separate from opposition proceedings. The Clearinghouse is intended to help address potential conflicts between trade-marks and the second-level domains that will eventually be created on the new gTLDs, once the new gTLDs go live (www.domain.gtld).

In essence, the Clearinghouse will be a trade-mark repository permitting brand owners to authenticate their marks in order to better monitor and police their use as second-level domain names on the new gTLDs. It should be noted, however, that authenticating trade-marks with the Clearinghouse will not create legal rights, or an entitlement to register a given trade-mark as a domain name on a given gTLD; conflicts will still be possible (e.g., two brand owners with legal rights to the same mark in their respective jurisdictions both authenticate their home registrations with the Clearinghouse in order to register the mark as a domain name on the same gTLD). 

What are the benefits of authenticating marks?

Authenticating trade-marks with the Clearinghouse offers brand owners several distinct advantages:

Trade-mark reservation: Each time a new gTLD goes live, its operator will be obliged to conduct a sunrise period of at least 30 days during which brand owners may request registration of their Clearinghouse authenticated trade-marks as domain names (which would remove the mark from the pool of possible domain names on that gTLD). Each new gTLD will conduct its own sunrise period individually: therefore, brand owners planning to register their marks on all new gTLDs face the prospect of participating in a large number of sunrise periods (the total depends on the number of new gTLDs that are ultimately approved). ICANN is currently working on a way of communicating the start dates of the various sunrise periods to brand owners.  

Notice of conflicting domain names: Brand owners with authenticated marks will be entitled to certain notifications of potential conflicts.

  • First, during a given gTLD's sunrise period, the owner of an authenticated mark must be given notice if a third party seeks a sunrise registration for a domain name that is identical to the mark.
  • Following the sunrise reservation period, for at least the first 60 days of open registration on a new gTLD, an applicant requesting registration of a domain name identical to an authenticated mark will receive notice of the potential conflict, requiring the applicant to confirm that their use of the applied-for domain name will not infringe on the brand owner's rights. Once the applicant does so, and the requested domain name is granted, the owner of the authenticated mark will receive notice of the registration.    

Domain name complaints: In addition to the start-up rights protection measures described above (which may eventually expire following the launch of a gTLD), new gTLDs will also be required to implement longer term protection measures, including a rapid suspension procedure for clearly infringing domain name registrations. Authenticating marks (and filing evidence of their use) with the Clearinghouse will provide brand owners a convenient way of establishing their trade-mark rights in order to raise complaints under this procedure.

Procedure and cost:

Brand owners will be able to file various types of trade-marks (with various forms of supporting documentation) with the Clearinghouse, including:

  • Nationally registered word marks —  e.g., brand owner files a Canadian reg. certificate (or relevant registration particulars).
  • Regionally registered word marks  —  e.g., brand owner files a copy of a European Community reg. certificate (or relevant registration particulars).
  • Judicially validated work marks —  e.g., brand owner files documents properly entered by a court evidencing the validation of a common law mark.
  • Word mark recognized by treaty — e.g., an organization responsible for administering a geographic indication files a copy of the treaty provision that extends trade-mark protection to said geographic indication, with evidence of the provision's effective date.

Trade-marks that have merely been applied-for, as well as registrations that have been expunged, are not eligible for inclusion in the Clearinghouse.

It will not be necessary to provide evidence of use to include a trade-mark in the Clearinghouse; however, for brand owners relying on national or regional trade-mark registrations, filing evidence of use will be a pre-requisite for participating in the new gTLDs' sunrise periods, when brand owners will be able to request early registration of their authenticated marks as domain names. (Brand owners relying on national or regional trade-mark registrations without evidence of use will still be entitled to receive notice of potentially conflicting domain name registrations for at least the first 60 days of open registration following the sunrise period, as described above). Filing evidence of use with the Clearinghouse will also be helpful after these start-up protection mechanisms have concluded, as brand owners will be able to use this evidence to ground complaints made under the rapid suspension procedure.

Evidence of use will consist of (1) a signed declaration asserting use; and (2) one specimen showing how the mark is currently used in the marketplace, such as a tag, label, brochure, or advertising specimen.

The basic cost of including a single trade-mark with the Clearinghouse is: $150 US for a one-year registration; $435 US for a three-year registration; and $725 US for a five-year registration. Where brand owners only wish to include a small number of trade-marks in the Clearinghouse (10 marks or fewer), these fees will be payable via credit card. Where brand owners wish to include a greater number of registrations, they will have set up a prepayment account. Significant volume discounts will be available to those requesting the inclusion of large numbers of marks in the Clearinghouse. Therefore, third-party service providers may be able to offer authentication with the Clearinghouse at lower prices than brand owners could themselves obtain. 


ICANN's plans for deploying the new gTLDs are evolving on an ongoing basis. As such, the information provided above is subject to change. Please contact your Gowlings professional for more information.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
8 Nov 2016, Seminar, Ottawa, Canada

The prospect of an internal investigation raises many thorny issues. This presentation will canvass some of the potential triggering events, and discuss how to structure an investigation, retain forensic assistance and manage the inevitable ethical issues that will arise.

22 Nov 2016, Seminar, Ottawa, Canada

From the boardroom to the shop floor, effective organizations recognize the value of having a diverse workplace. This presentation will explore effective strategies to promote diversity, defeat bias and encourage a broader community outlook.

7 Dec 2016, Seminar, Ottawa, Canada

Staying local but going global presents its challenges. Gowling WLG lawyers offer an international roundtable on doing business in the U.K., France, Germany, China and Russia. This three-hour session will videoconference in lawyers from around the world to discuss business and intellectual property hurdles.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.