The Internet Corporation for Assigned Names and Numbers (ICANN) is, at last, preparing to roll out the first of the generic Top Level Domains (gTLD). Now is a good time for trade mark owners to ensure they are aware of current gTLD developments.
ICANN has released an update on the fate of a number of controversial gTLDs. .Thai has been refused registration, with .indians and .persiangulf seemingly facing the same fate. Whilst the fate of the highly publicised .amazon gTLD, unfortunately for river, rainforest and book enthusiasts, remains unknown (we note that it appears highly unlikely that .amazon will be available for registration, however, no definitive decision has been made).
In a recent, positive move for brand owners, ICANN adopted a resolution affirming that ‘dotless domain names’ are, and will remain, prohibited. This is a particularly important point, when the ‘url address bar’ of your favourite browser is often used to directly access the results of a search engine.
For example, this resolution will prevent a situation where the domain name ‘car’ could be registered. If that domain was registered, instead of searching for ‘car’ using the ‘url address bar’ and receiving the familiar search results, a user would be automatically re-directed to the website hosted at the ‘http://car’ domain name. Accordingly, what was once a ‘keyword’ for search engines would become a browser address and instead of searching for ‘car’ you would end up at the website hosted at the ‘car’ domain name.
This should provide those trade mark and brand owners who currently utilise paid-for keyword search results some comfort that their investment will not be diminished.
Trademark Clearing House and Legal Rights Objections
While the initial roll-out of gTLDs will be non-Latin character domains, ICANN expects to issue 20 gTLDs per week, so it won’t take too long until .opr, .play, and .dog (the three highest priority Latin character domains) are up and running.
Whilst the fate of Legal Rights Objections (LRO), being, any objection raised against a new gTLD based on registered or unregistered trade marks, appear to greatly favour the gTLD applicant (we note that of the 63 decided LROs, only 4 have been successful and only 1 of those without a dissenting opinion – LRO decisions are available here), if trade mark owners wish to become aware of a gTLD application that matches its trade mark, it should consider registering its trade marks with the Trademark Clearing House.
The Trademark Clearing House went ‘live’ earlier this month and appears to give trade mark owners a useful means for preventing a trade mark from becoming a third party’s gTLD. We explain more about the Trademark Clearinghouse and the benefits for trade mark owners in our earlier publication, here.
If you are a trade mark owner looking for more information on gTLDs, or protecting your trade marks on the internet more generally, please do not hesitate to contact us.