UK: Top-Level Domain Names - Have Brand Owners Done Enough To Protect Against Possible Trade Mark Infringement?

The new generic Top-Level Domains (gTLDs) are upon us – havebrand owners done enough to protect against possible trade mark infringement?

Now is the time to register your brand in conjunction with 14 of the first Latin script gTLDs, or to object to other registrations during what is known as the 'Sunrise' period. The introduction of the new gTLDs will allow for Internet addresses such as www.nike.clothing or www.finance.guru.

The first 23 Latin script gTLDs to have their Sunrise periods announced are as follows:
 

   
The following Latin script gTLDs have been delegated (entered into the Internet's Root Zone, the authoritative database for the Internet) but are yet to have a date confirmed for the Sunrise period:

To take part in the Sunrise period, it is mandatory for a trade mark holder to have a validated trade mark entry in the Trade mark Clearinghouse – a process which takes at least 2 to 3 weeks. The Clearinghouse has attempted to limit the need for a 'mad dash' to register new domains during the Sunrise period by providing a notification service. The holders of trade marks registered at the Clearinghouse will be warned of any domain name applications which exactly match their registered mark.

ICANN, the organisation responsible for overseeing Internet addresses, has entered into a total of 162 Registry Agreements with the final amount of gTLDs possibly increasing to 1,400. The full list detailing each of those Registry Agreements is available to view at http://www.icann.org/en/about/agreements/registries.

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.