New Domain Names Announced – Trade-mark Owners Take Note 

publication 

June 2011

Intellectual Property Bulletin
The Internet Corporation for Assigned Names and Numbers ("ICANN") has today approved a plan to allow the registration of new internet domain name endings (generic top-level domain names or "gTLDs"). It is expected that commencing January 12, 2012, companies, organizations and institutions in good standing (currently individuals or sole proprietors would not be permitted to apply) would be able to apply for a gTLD of their choice – they will no longer be limited to .com, .ca etc. This opens the doors to companies applying to register their names or trade-marks as the gTLD, such as .porsche, .nike or .rbc.

ICANN has approved a lengthy gTLD Applicant Guidebook which sets out the rules around this new process as well as the procedures. It is expected that there will be a fairly rigorous application and examination process which somewhat parallels the current trade-mark application process, with new gTLDs being published for opposition and dispute resolution procedures applicable.

The fee for applying for obtaining a new gTLD will be $185,000 U.S. with $5,000 of that payable as an application fee. Portions of that charge may be refunded if the application does not get approved, but there may also be extra charges if the application requires additional review or is opposed.

The gTLD expansion will not only be of interest to those entities who plan to apply to establish their name or trade-mark as a top level domain; brand owners will want to monitor the gTLD application process and be ready to launch objections by the deadline in the event that another entity applies for a top level domain that is identical - to or confusingly similar – to its own trade-marks. For example, if Company 1 owns rights in trade-mark XYZ in Australia and applies to secure .XYZ as a gTLD, Company 2, which owns a registration for the trade-mark XYZ in Canada may wish to object to the proposed gTLD even if Company 2 does not wish to establish the gTLD for itself. Brand owners will also have to be mindful of the fact that the gTLD expansion will mean that there will be even more domains in which cybersquatting may occur, and thus an increased level of vigilance will be required.

For more information on this, or any other domain name issue, please contact Sharon Groom or Peter Giddens.

By Sharon Groom and Peter Giddens

a cautionary note

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.

© McMillan LLP 2011