A New “Problem” for Trademark Owners: Protecting Your Marks and Brands during the gTLD Application and Review Process

Intellectual Property News



Get ready, trademark owners: you, your competitors, and cybersquatters will soon have a much wider field of domain name possibilities to register, protect, and “police.” From January to early April, the International Corporation for Assigned Names and Numbers (ICANN)—which governs the availability of generic top-level domains (gTLDs) such as .com, .org, and .biz—accepted applications from local governments, public organizations, and private companies for possibly hundreds of new gTLDs, such as .photo, .eco, .chicago, and .Microsoft. Successful applicants may restrict use of some gTLDs to their own use, but many more will be available for public registration of domain names. These new gTLDs may have a substantial effect on a wide number of trademarks, including your and your competitors’ trademark portfolios. To be prepared to both take advantage of these new gTLDs and protect your marks from cybersquatters and others, we provide here a brief overview of the process, your ability to challenge proposed new gTLDs (and eventually individually registered domain names), and steps you can take to protect your marks.


During a three-month window in early 2012, ICANN received applications for new gTLDs. Some companies and organizations, such as Hitachi, Canon, and New York City, have publicly announced their intent to apply for a gTLD. However, the vast majority of applications (currently estimated at over 1,000) are kept secret until ICANN publicly releases the applications in May 2012. Once the evaluation and public objection process is completed in November 2012, successful applicants will become the registrars of their new gTLDs. Some of the applicants, particularly large corporations obtaining a gTLD with their trademark, will restrict the use of their new gTLDs to their own use. However, many other gTLDs, such as .photo, .hotel, and .eco, will likely be open to the public to register domain names.

After ICANN releases the applications, the public will have the opportunity during the public objection process to comment on the applications or formally object. For trademark owners, the “legal rights” ground for objection is the most important. If a gTLD application is likely to cause confusion with a third party’s registered trademark, that party can file an objection with the World Intellectual Property Organization (WIPO), which will arbitrate the dispute. To file an objection before a single arbitrator at WIPO on legal rights grounds, the party must pay an initial $10,000 fee, $8000 of which will be returned if the objection is successful. A WIPO panel consisting of three arbitrators will be more expensive.

Third parties can also object on “community grounds.” For example, if Canon were to apply for exclusive use of “.photo,” other camera companies could object to Canon’s exclusive use for the .photo gTLD based on the real (or perhaps perceived) unfair advantage that the .photo domain would give Canon in the marketplace. In order to succeed, the objecting party must demonstrate significant community opposition to the exclusive use of the proposed gTLD. Therefore, such objections will generally be made by trade or industry-wide organizations on behalf of multiple parties. The International Center of Expertise of the International Chamber of Commerce will arbitrate community objections at an estimated advance fee of $58,000. As with the legal rights objection, the bulk of this fee will be refunded if the objection is successful.

After November, ICANN will begin authorizing the use of new gTLDs submitted during the current application cycle. The applicants who have secured the gTLD may then register domain names from others on the new gTLD. After the gTLD is authorized, parties may still challenge infringing or bad faith uses of the gTLD or subsequent individual domain names through the Post Delegation Dispute Resolution Procedure. Parties can also continue to use the well-established Uniform Dispute Resolution Procedure (UDRP) against particular domain name registrations that infringe their marks.

To protect against cybersquatting and other illegitimate domain names on the new gTLDs, ICANN will also create a Trademark Clearinghouse. Trademark owners will be able to register their trademarks with the clearinghouse. However, the clearinghouse will only notify the owner when a party applies for a domain name with an exact match to the owner’s mark. For example, Marriott Hotels would be notified if a party applied for “www.marriott.hotel,” but not “www.mariot.hotel” or “www.ihatemarriott.hotel.”


The addition of potentially hundreds of new gTLDs poses many issues for trademark owners. In order to maximally protect your marks, we recommend taking the following actions.

First, review the list of the new gTLD applications when they are published for possible infringement of your trademarks or the use of industry keywords. For gTLDs that pose a substantial threat to or are likely to cause confusion with your trademarks, you should consider filing an objection at WIPO.

Second, identify gTLDs that you consider especially relevant to your industry. Some gTLDs will be open to general use, and you may consider registering on those that you consider highly relevant to your industry once the gTLD is available. For example, music-related companies should strongly consider registering a .music domain name to protect their rights.

Third, register word marks with the Trademark Clearinghouse once it is established. This will alert you to domain name applications for exact matches of your word marks.

Finally, register with a mark monitoring service to monitor for domain names that are not exact matches, but do use or are confusingly similar to your marks. This is important because the Trademark Clearinghouse will only notify registered owners of exact matches.

Bradley Arant Boult Cummings’ Intellectual Property attorneys stand ready to assist you in protecting your marks and brands throughout this process.