The ICANN new generic Top Level Domains: What You Need to Know
The Internet Corporation for Assigned Names (ICANN), the body that regulates the internet’s domain name system, revealed the names and designations of the applicants for the first round of the new generic Top Level Domain (ngTLDs) on June 13th. The full list is available here.
Background
In June, 2011, ICANN approved a program to expand the internet’s domain name system through the introduction of new generic domains. Instead of being restricted to 22 domains currently in use (eg .com, .net, .org) organisations and companies would be able to register new gTLDs like .pizza or .hotel or .cadbury.
Opposition period
The publication of the list initiates a 60 day period for the public to make submissions and then a 7 month formal objection period, which is scheduled to expire in January 2012. During the formal objection period trade mark owners can make submissions on or formally object to applications.
There are several types of objections applicants and non-applicants may raise during this period, including
legal rights objection (the application is the same as or similar to a pre-existing trade mark);
confusion (eg the applied for gTLD is confusingly similar to another existing or proposed gTLD);
public interest concerns; and
objections based on the interests of any community with a common interest.
Brand owners who wish to safeguard their trade mark rights will likely revert to the legal rights objection. We encourage brand owners to review the list to ensure their marks will not be misused.
In the event that a brand owner’s mark is on that list actions for trade mark infringement or passing off can be taken. However using the internal ICANN objection procedures may save time and expense.
The New Zealand Context
There were two applications made by New Zealand applicants. The first, .kiwi, an application filed by business leaders with ambitions to help those affected by the Canterbury Earthquakes.
The other is .RIP, filed by a New Zealand company Dotrip Limited based in Napier.
Three applications were made by overseas applicants for .RUGBY, one being by the IRB.
Contact Ellis Terry with any questions regarding the new gTLDs or any other intellectual property matters.