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Internet domain name expansion now underway

31 October 2013

The recent delegation of the first gTLDs by ICANN triggers the start of the sunrise period. Will the expansion of existing domain name registrations give rise to trade mark infringement concerns for brand owners?

ICANN has delegated the first four strings (all in Arabic, Chinese or Cyrillic scripts) in its expanded gTLD programme. The "sunrise period" has begun for the strings, which are the first four out of many new international gTLDs. How does this development affect trade mark owners?

In 2011, ICANN, the organisation that administers domain names, approved an expansion of its existing domain names programme, to include generic top level domain (gTLD) names (for example, .bank, .clothing and .beer). As a result of the expanded programme, more than a thousand new gTLDs are expected to launch during 2013 and 2014 and many gTLDs will be open to the public.

For trade mark owners, the expansion gives rise to trade mark infringement concerns. There are steps a brand owner can take to protect its brand.

These steps may include applying for gTLDs for established brands, monitoring gTLD applications (or subscribing to an online monitoring service) for key brands, reviewing the gTLD list for potential risks to a brand (what is the applied-for string and who is the applicant, a competitor?) and raising objections when necessary during the application period.

Further, ICANN is establishing a Trademark Clearinghouse (a database of recorded existing trade marks). Once a trade mark is registered in the Clearinghouse and use of the mark has been verified (if the mark has not been validated in a court of law), trade mark owners will benefit from a "sunrise period" entitling the brand owner to apply for a second level domain name for the mark.

Brand owners will also be entitled to receive notice of a third party’s attempt to register an identical mark as a gTLD. A brand owner may then take steps to "block" any domain names containing the recorded trade mark.

On 23 October 2013, ICANN commenced the roll-out of its expansion programme by introducing the new strings into the internet's root zone.

ICANN has delegated the first gTLDs under the programme, meaning that they have been introduced into the internet's root zone. Such introduction triggers the start of the sunrise period and applications for the gTLDs are likely. So far, only around 7,000 trade marks have been recorded in the Trademark Clearinghouse which suggests that brand owners may wish to take steps now to protect their trade marks.

For more information please contact Ian Wood, Partner

T: +44 (0)20 7203 5124