The introduction of new generic top-level domain names will require increased vigilance from brand owners

New gTLDs

From 12 January to 12 April 2012 the Internet Corporation for Assigned Names and Numbers (ICANN) will be accepting applications for new generic top-level domain names (gTLDs). Currently, web addresses have to end in one of just twenty one permitted gTLDS, such as .com, .net or .org.

The new gTLD regime will expand the current domain name system and will alter the nature of the internet as we currently know it. The new gTLDs will allow companies to acquire their own endings to web addresses. New gTLDs can be based on trade marks,  such as .canon, or can be for generic terms, such as .shop. ICANN will allow applicants to opt to make exclusive use of their gTLD providing them with the freedom to use their gTLD for a variety of different web addresses incorporating the same ending. Alternatively, owners can allow anyone to obtain a second-level domain name incorporating their gTLD, such as camerasales.canon.

Acquiring a gTLD places an obligation on the owner to become responsible for all the domain names registered using their gTLD. In other words, the owner has to run a registry business, something which is far removed from the current obligations of the owner of a web address. Further, there is an initial filing fee in the region of £120,000 and a requirement to run the registry for a minimum of ten years. Therefore, obtaining and maintaining a new gTLD will be a costly and onerous undertaking.

Impact on Brand Owners

As the potential number of domain names increases so too will the potential for trade mark infringement through the illegitimate use of registered trade marks as domain names.  From May 2012 trade mark owners will have the opportunity to object to any new gTLDs which may infringe their rights. This provides an incentive and opportunity for brand owners to review their online trade mark protection and consider extending their trade mark portfolio in order to be ready for the expansion of the domain name system.

Mark Caddle
Trade Mark Group