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The Impact of New Generic Top Level Domains (“gTLDs”) Programme on Trademark Owners
1 May 2013

Background

Since the Internet Corporation for Assigned Names and Numbers (“ICANN”), a non-profit organization in United States, has approved the new gTLDs programme in 2011, nearly 2,000 applications have been received and the first round of approvals is expected to be released this April. The new gTLDs programme will open up the top level of the Internet’s namespace from the current 22 gTLDs (e.g. .com, .net, .org extensions) to potentially hundreds of different gTLDs. Soon, the Internationalized Domain Name will not be restricted to the twenty-six letters of the basic Latin alphabet but will also include characters in any local language (e.g. .church, .shop, .Paris, .vermögensberatung, .天主教, .食品, .我爱你, .ストア). This development will significantly affect how Internet users search for information and how businesses will market their brands in the future.

The Application Process

Applicants are required to file their applications through the use of a dedicated web-based application interface named “TLD Application System”, where they will need to show their financial, technical and operational capabilities. ICANN will then conduct an administrative completeness check and the applications will be published for public comments on the ICANN website at the commenting stage. Public responses will be considered by the evaluating panels. The initial evaluation fee is US$185,000 and the subsequent annual fee for operating a gTLD is approximately US$25,000. The first application window was opened in January 2012 and lasted for about 90 days.

Upon publication of the application, parties with standing to object may file a formal objection against the application within a specified period. The objection mechanism, unlike the commenting stage, will trigger a formal dispute resolution proceeding between the applicant and the objector. The objector may rely on any one of the following grounds of objection :-

(a) String Confusion Objection – The applied-for gTLD string is confusingly similar to an existing gTLD or to another applied-for gTLD string in the same round of applications;

(b) Legal Rights Objection – The applied-for gTLD string infringes on existing legal rights (such as trademark rights) of the objector;

(c) Limited Public Interest Objection – The applied-for gTLD string is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law (such as the Universal Declaration of Human Rights); or

(d) Community Objection – There is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string may be explicitly or implicitly targetted.

Impact on Trademark Owners

With the introduction of the new gTLDs, trademark owners, especially those with cross-border business, should re-consider their strategy to protect their trademark as it may be registered as a gTLD by a competitor (e.g. bigsale.[your trademark]).

Starting from 26 March 2013, trademark owners may submit their trademark data into the Trademark Clearinghouse (“TMCH”), a centralized repository for trademark data, where the trademark owners can record their marks before any new gTLD is registered. The following services are available to trademark owners at relatively low costs :-

(1) Sunrise Services – the TMCH will allow the trademark owner an advance opportunity to register domain names corresponding to their marks within the sunrise period, a 30-day mandatory period before names become available to the public; and

(2) Trademark Claims Services – anyone attempting to register a domain name matching a mark recorded in the TMCH will receive a notification with the relevant mark’s information. If the person wishes to continue to register that domain name, the trademark owner of the mark will immediately be notified so as to give it/him the opportunity to take action against the domain name registration.

Conclusion

With the new gTLD programme, global corporations may consider applying for their own gTLDs and take advantage of this new online marketing tool. Although the application process is not simple due to its technical and financial requirements, the online presence can be valuable for corporations with global businesses.

On the other hand, trademark owners should be aware of possible trademark infringement or dilution if a gTLD string similar to its corresponding mark is being applied for. Trademark owners should regularly check for the publication of the new gTLD applications and timely file comments or objections against applications where necessary.

The recordal of their trademark registrations with the TMCH will also be an effective and economical option for trademark owners. This service will not only allow the trademark owners to register their domain names in advance during the sunrise period but also be notified whenever a conflicting domain name is being applied for.

If you have any queries regarding the above eNews or any other questions relating to intellectual property laws, experienced lawyers in our Intellectual Property Practice will be happy to assist you.

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