Starting 2014 ICANN launches a large number of new domain endings. Trademark owners have the opportunity to broaden their presence on the internet. At the same time it may become necessary to intensify one’s efforts in monitoring and protecting a trademark.

ICANN (Internet Corporation for Assigned Names and Numbers) is currently expanding the range of available generic top-level domains (gTLDs). A TLD is the ending of a domain name. Up to now, there are country code top-level domains such as “.us”, “.ch” or “.li”, well-known generic top-level domains such as “.com”, “.net”, “.org” but also TLDs such as “.biz” or “.info”.

From January to April 2012 ICANN accepted applications for new gTLDs. A total of 1930 applications were submitted, for instance “.zuerich”, “.blog”, “.web” or “.shop”. ICANN is currently examining these applications and will gradually introduce new gTLDs starting 2014. Once permitted by ICANN, a new gTLD will be administrated by the applicant himself. Some of the new gTLDs will be open to the public for registration. Other gTLDs are identical to existing trademarks, such as “.apple” or “.google” and will not be open for registration.

Trademark owners have the opportunity to broaden their presence on the internet, for instance by using top-level domains that match their goods or services. At the same time the cost of protecting one’s trademark may increase because of the large number of new top-level domains. While it used to be sufficient to register a trademark with 5 or 10 key top-level domains the situation will become more complex with presumably over 1000 new gTLDs. Trademark owners need to monitor their right and take action where appropriate.

With the Trademark Clearinghouse (TMCH) ICANN offers a service to facilitate the protection of trademark rights for the new gTLDs. A trademark can be listed in a centralized database for an annual fee. Whenever a new gTLD is launched, registered trademark owners can claim their trademark in advance as a domain name in a so called “sunrise period”. When the sunrise period is over, the so called Trademark Claims Service will be activated. If someone tries to register a trademark that is listed in the database, a warning message will be displayed to the applicant. If the applicant ignores the warning message and claims the mark as a domain name, a message will be sent to the trademark owner who can then take action against the registration, if necessary.

You may find further information here or ask one of our specialists.

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