January 15, 2014
So, what’s the big story with those new gTLDs?
The new gTLD program, which was launched by the ICANN in June 2011, opened the opportunity to apply for new top level Internet domain names. The ICANN (Internet Corporation for Assigned Names and Numbers) is the non-profit worldwide organization, controlled by the U.S. government, responsible of the global internet system and regulation of the Domain Name System (DNS). A gTLD is a Generic Top-Level Domain, namely, the part of the domain name address appearing after the “dot”. Until now, there were only 22 gTLDs, the most important being “.com”, “.net” or “.org”.
 
The new gTLDs are supposed to open a new era in the internet Domain Names System, not only because the biggest brands were offered the opportunity to manage their own domain names system, but also because specific communities, industries or geographical places will be able to play a considerable role in the internet space.
 
The ICANN has divided the new gTLDs in 4 categories:
  • Standard/generic general terms: for example “.computer”
  • Community: for example “.gay”
  • Geographic: for example “.paris”
  • Brand: for example “.motorola”
The new gTLDs application procedure began on January 12, 2012 and was closed on March 13, 2013. The first gTLDs were assigned in October 2013. The initial price to apply for a gTLD was US$ 185,000. The annual renewal fee of the domain will be US$ 25,000. Over 1,900 applications for new gTLDs were received, among which a total of 266 have completed the evaluation and objection phases. 

Of course, a disputes resolution system was established by the ICANN, which was assigned to three different organizations:
  • The International Centre for Dispute Resolution of the American Arbitration Association (AAA): for disputes relating to  competition between multiple applicants for similar gTLD names (“string confusion”).
  • The World Intellectual Property Organization (WIPO): for disputes relating to legal rights, for example the dispute about the  “.merck” gTLD between Merck KGaA and its former U.S. subsidiary Merck & Co.
  • The International Center of Expertise of the International Chamber of Commerce (ICC): for disputes relating to the public and  community interests, applying legal norms of morality and public order recognized under the international law.
Needless to say that parties interested in filing objections should have a serious interest and financial background, considering the high cost of the above procedures.
 
Once a new gTLD is accepted, its owner must establish a new registry in order to organize the registration of the second level domains names. The registration process is usually comprised of three steps: the Sunrise period open to trademark holders that have registered with the Trademark Clearinghouse (TMCH - see below), the Landrush period for reserved applicants and the Go Live period open to the public on a first-come, first-served basis. Thus, though the application costs for a new gTLD may seem very high, it must be kept in mind that, once accepted, the attribution of second level domain names under the new gTLD should generate incomes for the owner of such gTLD.
 
The registration process has already begun for a number of gTLDs. For example, for the new “.paris” extension owned by the city of Paris, though the Sunrise period has not yet been opened, applicants may already submit their project to the city of Paris in order to be granted priority during registration. The deadline for submission of such a project is January 30, 2014.
 
In order to ensure protection of trademark owners’ rights, a Trademark Clearinghouse (TMCH) was established by the ICANN. The TMCH provides both “sunrise services” and “trademark claims services”. The “trademark claims services” enable trademark owners having registered their marks at the TMCH, to be notified of any application to register a second level domain name that would correspond to any of their marks, so that appropriate and timely action could be taken. The “sunrise services” enable them to register their marks as domain names during the Sunrise period of the new gTLDs (otherwise, they must wait for the Go Live period).
 
The cost of registration at the TMCH is US$ 150 per mark per year.
 
The TMCH system poses several problems. The first and main problem is that it only works for exact matches of the mark (even the plural of an identical mark will not be notified). Moreover, the TMCH will only send a warning of potential infringement to the third party attempting to register a domain that matches a registered trademark, but will not block the registration of such domain. Furthermore, registration of a trademark with the TMCH is mandatory in order to enjoy from the Sunrise periods of the new gTLDs. Finally, companies owning a large number of brands will have difficulties in selecting the trademarks to be registered. One can just imagine the nightmare for Johnson & Johnson!
 
Thus, trademark owners may prefer to monitor the second level domain names registration by another mean, for example with the help of a domain names watch service.
 
In conclusion, the new gTLDs may involve considerable changes in the internet world, but meanwhile, they look more like a new game exclusively reserved to a private club of large and wealthy organizations. For the smaller trademark owners, they could constitute nothing than a big headache: the risk that their brand will be acquired by third parties as part of a domain name will be multiplied and thus trademark rights protection rendered considerably harder.