In 2011, the Internet Corporation for Assigned Names and Numbers (ICANN, the professional body for domain name registration) launched the new generic top level domain (gTLD) programme to permit the introduction of new top level domains on the internet. The move, which has attracted much publicity, will allow web addresses to end in a whole range of new domains (such as .app, .sport, .accountant) beyond the likes of .com, .co.uk and .net.

The application window opened in early 2012 and ICANN has revealed that over 1,900 applications have been received for new gTLDs to become available subject to an initial evaluation of their suitability. Most of the new gTLDs are anticipated to go live towards the end of this year but some may be launched within the next few months.

What does this mean for existing rights owners? Besides the new marketing opportunities presented, one immediate consequence is that the explosion in new gTLDs is likely to create an increase in the potential for "cyber-squatting". To address this concern, ICANN has put in place safeguards designed to reduce the potential for infringement of a legitimate IP owner's rights.

Protection for Trade Mark Owners

ICANN has set up a Trademark Clearinghouse. Owners of a protectable right in a trade mark can apply to record the mark in the Clearinghouse for a small annual fee. The Clearinghouse will serve as a centralised database of verified data on registered trade marks and gives rise to two important protections for trade mark owners.

Firstly, individual gTLD registries will be obliged to provide a "sunrise period" of at least 30 days for anyone who has a verified record in the Clearinghouse. In this period, the owner will be given priority to purchase the second-level domain name relating to the new gTLD (ie the part of a web address after www. but before .com, for example) that matches their trade mark before this is made available for sale to the general public.

Secondly, there will be a further prescribed period during which the registry will provide a notice of trade mark claim to anyone looking to register a second-level domain name that appears in the Clearinghouse. The applicant may only proceed with the registration after acknowledging receipt of the notice, which will make it difficult for a cyber-squatter to claim that they were not aware of the risk of a potential trade mark infringement. In addition, if the prospective purchaser should decide to proceed with their application notwithstanding the claim notice they have received, a subsequent notice will then be issued to the trade mark owner who will be given the opportunity to suspend or obtain the domain name by invoking a separate dispute resolution process.

To facilitate this ICANN has established, in addition to the operation of the Clearinghouse, a range of Rights Protection Mechanisms to protect the rights of existing rights holders who may become the victim of abusive registrations or cybersquatting. These comprise various "out of court" dispute resolution procedures specifically designed to enable the quick and cost effective handling of registration complaints.

Act Now to Minimise Risk

This is an area of rapid development, and trade mark owners are encouraged to act quickly. The key step is registration at the ICANN Clearinghouse – trade mark owners will not be able to benefit from the sunrise period if their registration is not in place when the first new gTLDs go live. Thereafter, it will be a case of monitoring the new gTLDs as and when they are launched and if necessary, taking steps to secure your own domain name registrations for those new gTLDs of specific relevance and interest to your business requirements.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.