Generic top-level domains
What can be registered as a top-level domain?
Almost any word can be registered as a generic top-level domain. This presents possibilities, but also legal and practical challenges for trademark owners and consumers.
It is possible to register trademarks as top-level domains, such as .mango, .suzuki, and purely generic names such as .toys. We now have new top-level domain registers where you can register for example barbie.toys. It is also possible to register individual geographic names such as .berlin.
It costs over one million Norwegian kroner to obtain one's own top-level domain register (for example .fish or .toys). Registering under the new top-level domains will in all likelihood cost about the same as today's top level domains (for example .com).
How many new top level domains are on the way?
ICANN received 1930 applications in the first round of new top-level domains and expect to establish around 1000 new domains. In August 2016 more than 1100 new top-level domains had been assigned. New domains will be available as soon as they pass the legal and technical tests necessary to becoming a new register.
What are the implications for trademark owners?
The new top level domains consist partly of trademarks (.nike), partly of generic words (.sport) and partly of geographic terms (.berlin). The applications are assessed and processed by ICANN. Some of the high profile trademark owners have chosen to register their trademarks as top-level domains, whilst others are more concerned with the issue of infringements of their trademark via a top-level domain or via a generic top-level domain.
What if I find my trademark in the list?
A complaint may be based on trademark rights, but the first appeal deadline has now passed.
It is possible to submit a complaint, even after a top level domain has been authorised, via a procedure called PDDRP (Delegation Dispute Resolution Procedure).
- See further details on the regulations in Applicant Guidebook (ICANN). Rules for complaints are in chapter 3 or on WIPO's website.
I would like to register my trademark under a new top-level domain
When the new top-level domains are operative, many of them will be available for everyone for registration. Other top level domains will be closed and only meant for a particular company or a specific group. If you wish to register your trademark under one of the new top-level domains, you must check which rules apply for the relevant top-level domain. Domain registrars, patents offices and lawyers will be able to assist you in this process.
All new registers will have a "sunrise" period, during which trademark owners who lodged their trademark with a Trademark Clearing House have a priority right to register their trademark as a domain name.
How can I monitor whether my trademark has been registered under new top-level domains?
Please be aware that others may also have a right to a trademark that is identical to your own, either because it is registered as a trademark in another country, or because it refers to other goods/services than your trademark.
As a trademark owner you should plan what to do if others register your trademark as a domain name. You can consider whether you need to monitor the new top-level domains that are most important for you. This will enable you to see whether other applicants try to register your trademark at the second level (second level domain). For example: if you have registered your acknowledged trademark, say, "Athene" for shoes, you need to decide whether you wish to go with the new top level domain option - .shoes.
Trademark Clearinghouse was set up because it will be difficult to keep up with the new the top-level domains. For a fee, you can lodge your own trademark here. If you have lodged your trademark with Trademark Clearinghouse, you may have both a priority right to seek a domain name in the newly established registers (sunrise), and also receive notifications if anyone applies for a domain name identical to your own trademark (Trademark Claims Service). In which case you may, if relevant, lodge a complaint. The person applying for a domain name will be informed that there are existing trademarks identical to the domain name they wish to register.
What if I find my trademark under other levels in a new list of top-level domains?
As a trademark owner, you should think through the kind of strategy you are going to adopt vis-à-vis registration under the new top-level domains. Some will decide that they are going to monitor everything (an almost impossible task); others the more important top-level domains, and others will decide not to react in any way. The strategy one adopts can depend on how much harm is done by having a trademark under the relevant top-level domain. It may also be the case that there are several owners with the same trademark rights as you in other countries and trade branches. So it is not always certain that a domain owner who has "taken" your trademark is actually deliberately cheating you and harming your reputation.
If you believe that your trademark rights are being infringed due to a registration under a top-level domain list, you have the right to complain via UDRP (Uniform Dispute Resolution Policy), which already exists for established top level domains, as well as the new complaints mechanism URS (Uniform Rapid Suspension System) which has been established for the new top-level domains. It is important to get a firm grasp of the regulations and, if necessary, seek professional help if you are considering submitting a complaint. Some of the complaints systems only give the option of complaining about registered word trademarks.
If you believe the registry itself is not being run in an acceptable way, you can also complain under the PDDRP (Delegation Dispute Resolution Procedure).
- See further details on the regulations in Applicant Guidebook (ICANN) and WIPO's website which describes the complaints systems.
When will there be another chance to apply for a top level domain?
ICANN will be setting up a new application window, when the processing of the applications that have already been received is complete. They have not given a time scale for this, but you can follow developments on ICANN's website.