- Protect Your Trade Marks From Generic Top Level Domain Names
- June 21, 2012
- Law Firm: Norton Rose Canada LLP - Montreal Office
A year ago, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a program to expand the Internet Domain Name system by introducing new generic Top Level Domain Names (gTLD(s)).
ICANN accepted applications for new gTLDs from 12 January 2012 to30 May 2012. On Wednesday, it published a list of all gTLD applications made during this period (together with the applicants’ names).
Due to the exceptionally large number of applications received, ICANN will review the applications in batches of 500 applications at a time. The gTLDs that successfully complete ICANN's review will become new gTLDs, that is, new domain name extensions in the domain name address system and should be ready for use by early 2013.
Whilst this is exciting news in the Internet world, trade mark owners should be aware that certain proposed gTLDs may infringe intellectual property rights or create confusion with existing trade marks. This is clear from the examples where several parties have sought to register the same gTLD. Others will set up a generic gTLD which traders would prefer were available for general use in a particular industry, such as .bank for banking or .careers for recruitment services.
Moving forward - what happens next?
The publication of this list triggers a public consultation period of 60 days. The publication also triggers an objection period of approximately 7 months (final date yet to be determined) during which time trade mark owners may lodge formal objections to proposed gTLDs. For example, if a proposed gTLD is in fact another party’s trade mark, or causes confusion with that party’s mark, the trade mark owner may formally object to the proposed gTLD. Filing an objection gives the trade mark owner an opportunity to voice its concern and have its objection considered before a panel of experts, prior to the proposed gTLD being finalised.
Various grounds give rise to an objection, including:
string confusion: the proposed gTLD is allegedly similar to an existing top level domain name or another applicant. (Here, the objector must be a gTLD applicant or existing top-level domain name operator);
legal rights: the proposed gTLD allegedly violates the objector’s rights or interests. (Here, anyone with rights that are being violated, for example trade mark infringement, may object);
limited public interest: the proposed gTLD allegedly offends generally accepted legal/social norms. (Here, anyone can file an objection though the objection is subject to a ‘quick-look’ review which will filter out frivolous or malicious objections); and
community: substantial opposition to the proposed gTLD is received from the community of the proposed gTLD. (Here, the objector must be an established entity that is associated with that community).
If an objection is successful, the proposed gTLD will be not be allowed.
What can I do to protect my business and my trade marks?
1. Review the list
In order to protect the value of your trade marks and brands we recommend that you review the list of gTLDs to ensure that none of the proposed gTLDs creates confusion with your brands. You should also consider whether there is a public interest in ensuring that any of the gTLDs do not become restricted to private business use.
If you form the view that a proposed gTLDs infringes your rights, we can further discuss the objection process with you.
2. ICANN established Trademark Clearinghouse
We also suggest that you consider using Trademark Clearinghouse being established by ICANN to assist with protection of trade marks. The basic intention of the Trademark Clearinghouse is to authenticate and store trade mark details. If a domain name is applied for which consists of a stored trade mark, the domain name applicant and Registrar will be required to conduct a review of the proposed domain name use to ensure it does not infringe the rights stored in the Trademark Clearinghouse.
The Clearinghouse will also provide information to the new gTLD registries to support pre-launch Sunrise or Trademark Claims Services.
As the Trademark Clearinghouse system is yet to be finalised, it is unclear how it will ultimately work in practice, however, this is a tool worth considering for those brand owners who repeatedly find themselves dealing with third party domain names using their trade marks.