There is potentially a new threat on the horizon for trade mark owners; 2012 saw a multitude of applications to ICANN for new Generic Top Level Domains (‘new gTLDs’).

The plan is that in the summer of 2013 a vast number of new gTLD’s will be created. We are all familiar with the current range of generic top level domain names such as .com, .org, .net, .info etc. and the host of country specific TLDs – .co.uk and so on. You have no doubt taken appropriate action to ensure that your trade marks are protected from cybersquatters and typosquatters in respect of these existing gTLDs. But a raft of new domain name registries will offer people and organisations the opportunity to register domain names ending in various alternatives which, subject to the application process, could include .art, .bet, .book, .charity, .clothing, .finance, .insurance, .loans, .football – among hundreds of others.

ICANN implemented this process in an attempt to free up the internet and to increase innovation and competition. This is, at best, arguable but in our view the expansion program opens up a new range of opportunities for cybersquatters, typosquatters and other trade mark infringers.

New gTLDs – Raise Objections Now

There are clearly some new gTLD applications that are not quite so generic (e.g. .amazon and .ladbrokes) and you may wish to check the list of applications to ensure that someone is not trying to apply for a new gTLD that is the same as or confusingly similar to your trade mark.

The current list of applications can be found at: https://gtldresult.icann.org/application-result/applicationstatus

If you believe that an application for a new gTLD infringes your rights you should raise a formal objection before 13 March 2013. There is, therefore, not a lot of time left to prepare formal objections. We are able to assist you with this process.

It would, of course, also be possible to take legal action through the courts but it would most likely be cheaper and simpler to raise formal objections to an application.

Second Level Domains (“SLDs”) – Trademark Clearinghouse

ICANN is aware that the new gTLDs provide a new opportunity for the unscrupulous and the unaware to apply for SLDs which infringe on your trade marks (e.g. www.[your trade mark].finance). ICANN had intended to set up a “Trademark Clearinghouse” by early 2013 but at the time of writing this had not come to fruition. There is currently some discussion going on as to the level of protection that should be afforded to trade mark holders. Following a meeting between ICANN, members of the Intellectual Property Constituency and others the “Strawman Solution” was proposed which, if brought in, would have expanded the protection available for trade mark holders. This created a backlash from those in the domain name community and it now appears unlikely that the Strawman Solution will come into effect. The basic premise (i.e. the non-Strawman Solution) is as follows:

1. You, as a trade mark holder, can submit your trade mark(s) data and a fee to the Trademark Clearinghouse (together with evidence of use of that trade mark to qualify to use the Sunrise Support below);

2. This data will be verified by a designated entity;

3. For a period of time (a minimum of 30 days) after a new gTLD registry opens, the holder of a trade mark registered with the Trademark Clearinghouse will be able to obtain a domain name containing the trade mark (“Sunrise Support”);

4. For a period of time (a minimum of 60 days) after general registration at a new gTLD registry opens, the holder of a trade mark registered with the Trademark Clearinghouse will be notified of any SLD registrations that match its trade marks and the proposed applicant of the SLD will be notified of the trade mark holders claims (“Trademark Claims”);

Under the current plans there are a number of drawbacks including: (1) the checks will only flag up identical results (not similar or confusing marks), (2) the Sunrise Support and the Trademark Claims will only last for a certain amount of time unless the specific registry decides to extend such services and (3) the Trademark Claims will only flag up an issue to a trade mark holder who will then have to take appropriate action to object to the SLD. Limited though they will be, the processes will provide trade mark holders with a measure of protection that should not be ignored.

We will provide updates on this in due course and we will be able to guide you through the process of registering your trade marks at the Trademark Clearinghouse to take advantage of the protection it offers.

Can I apply for a new gTLD now?

The deadline for applications for new gTLDs ended on 12 April 2012. However, on 7 February 2012 the ICANN board reaffirmed its commitment “to opening a second round of applications in the New gTLD Program as expeditiously as possible”. So if you missed out this time keep an eye on the ICANN website (and our IP Blog) for the next round. The ICANN fee for an application for a single new gTLD in the first round was only $185,000!


We are currently a little sceptical about the gTLD expansion program and it remains to be seen whether ICANN’s objectives will be met. A main aim was to increase global access by permitting new gTLDs, for example, in non-Latin scripts. There has been very little take-up of non-Latin new gTLDs and only a tiny number of applicants from lesser developed countries. By contrast, new companies such as Donuts Inc, headquartered in Washington in the US, secured $100 million in financing and has spent over half of this sum seeking to obtain 307 new gTLDs. The expansion program is obviously seen as an opportunity to make significant sums by selling SLDs or selling on the new gTLDs at a profit.

If you would like to file an objection to a new gTLD, register your interest in using the new Trademark Clearinghouse (when it comes online) or if you wish to discuss any of the issues raised by this article please contact Simon Miles, on 020 7691 4000 or simon.miles@edwincoe.com.

Please note that this blog is provided for general information only. It is not intended to amount to advice on which you should rely. You must obtain professional or specialist advice before taking, or refraining from, any action on the basis of the content of this blog.

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