Sun about to rise on new gTLDs

The release of the first new generic Top Level Domains (gTLDs) is imminent. Applications to register and operate the new gTLDs opened in the first quarter of 2012. After many months of evaluation by ICANN and public consultations, the first batch of new gTLD registries will soon begin accepting domain name registrations from the public after the initial sunrise period has closed.

ICANN received 1930 applications for new gTLDs. The applications cover a mix of generic words (eg .CAMERA and .CLOTHING), brand names (eg .MCDONALDS and .HILTON), geographic names registered by eligible government organisations (eg .DUBAI and .SYDNEY) and words in other language character sets. A lottery on 17 December 2012 determined the order in which the 1930 applications would be processed and examined and it is expected to result in around 1400 new gTLDs.

New gTLDs to be released

As at 18 October 2013, 662 new gTLD applicants have been invited to contract with ICANN and these domains will come on-line in phases. Although there has been no official announcement from ICANN, information from third party sources indicates that the following new gTLDs will soon commence their pre-launch sunrise periods:

  • Sunrise period opening late October 2013 – closing early January 2014:
    • CAMERA; CLOTHING; LIGHTING; SINGLES; VENTURES; VOYAGE; GURU; HOLDINGS; EQUIPMENT; BIKE; ESTATE.
  • Sunrise period opening mid November 2013 – closing mid January 2014:
    • CONTRACTORS; GUIDE; PLUMBING; LAND; GRAPHICS; TECHNOLOGY; GALLERY; CONSTRUCTION; PHOTOGRAPHY; ENTERPRISES; DIRECTORY; TODAY; KITCHEN; TIPS.
  • Sunrise period opening late November 2013 – closing late January 2014:
    • DIAMONDS; CAREERS; SHOES.

ICANN this week announced a further 4 IDNs (internationalised domain names) have now been delegated. These domains are “web/network” (Arabic); “online” (Cyrillic), “site” (Cyrillic) and “game(s) (Chinese). It is expected that Sunrise will commence shortly on these names as well.

These IDN names join the 36 other country code IDNs already released since 2009 under the IDN Fast Track Process. See full list at: http://ecomms.gtlaw.com.au/collect/click.aspx?u=/G1GTPto3VXEw8pJIcBQjLepX+xE4ryrHaEvdsqxGfXaZv0e8z6T/sTIe6Zlnazaalb7rpmeCYJcx5fN9U97sMRujRXBJG3l&rh=ff001302570f569719d4b1aed94caaad0091f22e-

Rights Protection Mechanisms (RPMs)

The new gTLDs will open up opportunities for existing trade mark owners to expand or change their online footprint. However, they also present new opportunities for infringement at the second level, for example, the registration of brands associated with generic categories of goods such as KODAK.camera or KODAK.photography. To reduce the potential for trade mark abuse in these new gTLDs, ICANN has established a Trademark Clearinghouse and has required new gTLD registries to institute various RPMs including a pre-launch period (Sunrise period) for brand owners to register their marks and an initial launch period (Trademark Claims period) where brand owners receive notice of applications that conflict with marks registered with the Clearinghouse.

The Trademarks Clearinghouse is a central repository for information on the rights of trade mark owners. The Trademarks Clearinghouse authenticates and validates all trade marks listed in the Clearinghouse and also provides a database against which applications are checked by new gTLD registries in the Sunrise and Trademark Claims periods. To take advantage of these RPMs, trade mark owners must register their trade marks with the Trademarks Clearinghouse.

The pre-launch Sunrise period must be offered by all new gTLD registries for a minimum of 30 days before the registry is open to the general public. During the Sunrise period, trade mark owners whose marks are registered with the Clearinghouse will be able to apply to register their trade mark as a second level domain name with the new gTLD on a preferential basis. Trade mark owners registered with the Clearinghouse will also be notified if another registered trade mark owner with an identical mark seeks to register that mark as a second level domain name during the Sunrise period. Once notified, trade mark owners will be able to challenge such registrations with the registry.

The initial launch Trademarks Claims period must be offered by all new gTLD registries for at least the first 60 days that registration is open to the general public (after the expiry on the Sunrise period). During the Trademarks Claims period, potential second level domain name registrants will be notified if the domain name they are seeking to register matches a trade mark in the Trademark Clearinghouse. The notice will include the details of the marks registered with the Clearinghouse. To proceed with registration, the potential registrant must warrant that use of the domain name will not infringe the registered mark. If the registrant elects to continue with registration, the trade mark owner will be notified and has the option to take action against the registrant.

Next steps for trade mark owners

Trade mark owners are still able to register their trade marks with the Trademark Clearinghouse. Failure to register with the Trademark Clearinghouse is not taken as a waiver of any rights and trade mark owners will have other options (eg. uniform rapid suspension, UDRP) to pursue any alleged abuse of their trade mark rights. However, trade mark owners will not have the benefit of the pre launch Sunrise period and Trademark Claims period unless they register their trade marks with the Trademark Clearinghouse. As registration with the Trademark Clearinghouse is a relatively low-cost exercise given the blocking and notice impact across all new gTLDs, we recommend that trade mark owners consider registering their core marks as soon as possible. Please let us know if you need any help with Clearinghouse registration or if you have any questions on the new gTLDs.