June 13 marked “Reveal Day” — the day on which the Internet Corporation for Assigned Names and Numbers (“ICANN”) released the list of applied-for generic top-level domains (“gTLD”). These new gTLDs, which follow the “.” in a domain name, expand the number of available options beyond the familiar “.com,” “.org,” “.edu,” and other existing gTLDs. According to ICANN, the expansion of top-level domains name options will increase competition and choice for the Internet’s addressing system. A full list of the applied-for gTLD strings is available here.
Trademark owners should be aware of the new gTLD regime and of the pending applications because they present both pitfalls and opportunities. The pitfalls consist in the potential that the new gTLDs may be confusingly similar to existing marks and thus infringe or dilute existing trademarks. In this regard, trademark owners should note that Reveal Day marks the beginning of a seven-month period in which objections can be filed against an applied-for gTLD string. Such objections may be based on four possible grounds: (1) string confusion objections, i.e., an applied-for string is confusingly similar to an existing TLD or another applied-for gTLD; (2) legal rights objections, i.e., an applied-for gTLD infringes the existing legal rights of the objector, such as the objector’s trademark rights; (3) limited public interest objections, i.e., the applied-for gTLD is contrary to accepted principles of morality and public order as recognized under international law; and (4) community objections, i.e., opposition to the applied-for gTLD from a significant portion of the community to which the gTLD is targeted.
The new gTLDs also present trademark owners with an opportunity to protect their marks. Owners can protect marks by taking advantage of ICANN’s “Sunrise” period, which provides owners with the opportunity to register their trademark as a second-level domain name, i.e., the operator to the left of the “.” in an Internet address. Even if a trademark owner was not one of the applicants for the applied-for gTLD strings, it should consider registering a second-level domain name under such a gTLD. For example, if a third party has applied for the gTLD “.inc” a trademark owner may consider registering its trademark or brand name as a second-level domain name, e.g., “trademark.inc” to protect its rights. Mark owners further have the opportunity to protect their marks through ICANN’s Trademark Clearinghouse. For a fee, mark owners can register their marks in the Trademark Clearinghouse in order to receive notice of the registration of a domain name that includes the registered mark. In addition, domain name registrants will receive real-time notice that their attempted registration matches a Trademark Clearinghouse record.
The new gTLD regime represents the reality of the ever-increasing importance of the Internet in today’s commercial marketplace. As ever, trademark owners should be diligent in protecting their marks online and take careful note of the filings for the new gTLDs.