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1. What are gTLD?
A generic top-level domain (“gTLD”) is the last part of a domain name: e.g. www.pestalozzilaw.com, www.example.net, www.example.org, www.example.info. These gTLD are maintained by the Internet Assigned Numbers Authority (“ICANN”) and are available for registration by any person or organisation. The category of gTLD contains besides these unrestricted gTLD, also sponsored (e.g. .gov, .int, .travel, etc.) and geographic gTLD (e.g. .asia, .cat) which are subject to certain user prerequisites.
2. Expansion of gTLDs
ICANN decided on 20 June 2011 to expand the currently 22 available gTLD. Basically companies and organizations will be able to choose arbitrary gTLDs. The use of non-Latin characters (such as Cyrillic, Arabic, Chinese, etc.) will also be allowed in the new gTLDs. A trademark owner can now register his brand as a gTLD: e.g. www.pestalozzilaw.pestalozzilaw.
3. ICANN’s Application Procedure and Timeline
The user registration and application submission period starts on 12 January 2012 and lasts until 12 April 2012. After this date ICANN will not consider applications for new gTLD. ICANN envisages that the first batch of new gTLDs will be operational at the beginning of 2013. The one-time application fee amounts to USD 185,000. The recurring annual fee is CHF 25,000. For further details regarding the application procedure please refer to the ICANN gTLD Application Guidebook (http://newgtlds.icann.org/applicants/agb).
4. Risks for Trademark Owners?
As opposed to trademarks, where the same brand can coexist in different classes, there can only be one string for a gTLD. Due to this “first come first served” principle, brand owners fear that a third party could apply for a gTLD which is identical or confusingly similar to their trademark. Objection procedures are envisaged for such situations.
5. Tracking of new gTLD Applications
After ICANN publishes the list of complete applications on its website the objection period will open. The following objections can be filed based on:
• likelihood of confusion of the gTLD applied for with an existing or applied-for gTLD (string confusion objection);
• infringement of third-party rights recognized under international agreements or standards (legal rights objection);
• violation of generally accepted legal norms of morality and public order by the applied-for gTLD (morality and public order objection); or
• likelihood of negative impacts on a recognized community that is associated with the applied-for gTLD (community objection).
For trademark owners in particular the legal rights objection will be the most important objection. It is therefore vital for brand owners to monitor the ICANN website for infringing applications. It is expected that the objection period will run from 1 May until 1 December 2012. ICANN also plans to implement various rights’ protection mechanisms and a so-called Trademark Clearing House as a central repository for information to be disseminated to the trademark holders.
6. Monitoring
Whether or not a company or organisation has decided to file an application for a new gTLD, it is recommend to monitor the applications as published on the ICANN website on a regular basis in order to comply with the deadlines for submitting objections against any new gTLDs registered by third parties which could infringe prior rights.
In addition it might be worthwhile to evaluate the companies’ current trademark and domain name portfolio and assess enforcement strategies. This might include the registration of additional trademarks with extended classes of goods and services or protection of existing trademarks in countries where currently no protection has been applied for, registration of slogans used in conjunction with the trademarks which are currently not yet registered as trademarks, etc.
7. No legal or tax consultancy
With its established expertise in the fields of trademark and domain name law as well as in other fields of intellectual property law and unfair competition, Pestalozzi Attorneys at Law Ltd. has always been a reliable partner at your side – and so since 100 years. This overview does not claim to be comprehensive. It does not represent legal or tax advice. If you have any questions relating to this overview, or would like advice concerning your particular circumstances, please get in touch with your contact at Pestalozzi Attorneys at Law Ltd. or one of the following persons:
Dr. Lorenza Ferrari Hofer
lorenza.ferrari(at)pestalozzilaw.com
Clara-Ann Gordon, LL.M.
clara-ann.gordon(at)pestalozzilaw.com
