New generic top level domains to revolutionise the internet

By Jonathan Agmon, Soroker Agmon

By the end of this year, a share of the 1,900 generic top-level domains (gTLDs) for which registration applications were submitted will begin to take effect. The advent, release and opening of these new top level registrations is a real revolution. The internet as we know it is about to change dramatically. Only 20 gTLDs exist today – “.com”, for example. A year from now, there will be dozens, if not hundreds of new gTLDs.

.pay, .life, .shop and .online are the first new gTLDs that have been approved. Owners of approximately 1,700 other gTLDs have already entered into the review and approval process with the Internet Corporation for Assigned Names and Numbers (ICANN), among them .sports, .beverages, .hotels and many others. According to predictions, half of the gTLDs will be open to registration, which will allow anyone to register domain names under some or all of them. For example, the Coca-Cola Company will be able to register its domains under the gTLD .beverages, so it will be <cocacola.beverages>, but someone else may also register the domain <great.beverages>.

Making the new gTLDs available to the public will adversely affect the rights of trademark owners who choose not to register their trademarks with most of the new gTLDs. Even today, trademark owners are engaged in a continuous struggle as names and trademarks that are similar or identical to their trademark are appropriated by others. Trademark owners also have problems with many other domain name-related effects which are likely to be even more severe; cyberflight, for example.

In Israel, some disputes reached the courts and 40 disputes were brought before the Internet Society (ISOC) of Israel, which runs a dispute settlement mechanism. The World Intellectual Property Organisation (WIPO), an organisation responsible for maintaining and promoting the protection of intellectual property worldwide, has a department solely responsible for handling and settling disputes between domain name holders and intellectual property right holders. Over the past 10 years, it has taken more than 10,000 decisions and the number continues to rise. It is likely that the WIPO will be resolving many more disputes with the advent of the new gTLDs.

In light of the imminent changes, ICANN decided to establish a new registry, the Trademark Clearinghouse. In the Trademark Clearinghouse, right holders may register their signs in one place to protect their rights with respect to any new gTLDs. Holders whose rights are not registered will not be able to use the Trademark Clearinghouse and will first have to submit registration applications for their trade names in the trademark office of at least one country.

By registering in the Trademark Clearinghouse, a rights holder can register trademarks using one request for the various new gTLDs during a “sunrise period”. Throughout the sunrise period, owners of a registered trademark can register a trademark before the respective new gTLD is released for general registration.

New gTLDs will not allow registration during the sunrise period without the authorisation of the trademark owner through the Trademark Clearinghouse. Holders of trademark rights should therefore register their trademarks with the Trademark Clearinghouse to benefit from the sunrise period. In addition, after the Sunrise period, holders of trademark rights who register their trademarks with the Trademark Clearinghouse will benefit from a messaging service through which they will receive notification of any attempts to register their trademarks in the three months following a new gTLD opening for registration. They will also receive a service that allows them to access quick proceedings against entities that try to cyber-squat their trademarks.

Once the trademark is verified by the Clearinghouse, the trademark owner can deposit up to 50 variations of the trademark, provided that each variation has been recognised as “harmful” as defined by the WIPO or court proceedings. Deposit of these variations allow the trademark owner to enjoy the messaging service in an expanded form. It is important to note that Clearinghouse services or messaging services do not excuse the right holder from registering trademarks under the new gTLD they wish to use.

As a final point, a trademark can be submitted for registration directly by the owner or by one of the Clearinghouse agents. The Clearinghouse examiners will allow only one chance to correct the information and documents submitted without additional cost. In such a case, a right holder will be requested to send the revised documents of the new application within 20 days after potential registration mistakes have been identified.

These are some of the many changes which will affect right holders in the coming months as a result of the entry of hundreds of different new gTLDs. We recommend right holders act in a timely manner to protect their rights.

Jonathan Agmon, Partner
Soroker Agmon, Advocates & Patent Attorneys, Herzliya, Israel
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Jonathan Agmon is a founding Partner at Soroker-Agmon, Advocates & Patent Attorneys. Jonathan specialises in litigation and in intellectual property law. Soroker-Agmon is one of Israel’s ten largest IP practices. The firm combines technical specialisation and legal expertise. Members of the firm are lawyers and patent attorneys with technical training in the various areas. Jonathan practices in the field of patents as well as in trademarks, designs, copyrights, plant varieties, domain names, intellectual property rights registration, litigation, oppositions, opinions, arbitration and consulting on IP matters. He is one of WIPO’s domain name panellists as well as being an arbitrator for the US-based National Arbitration Forum.

published: January 2014


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