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Client Update: New generic Top-Level Domains to go live shortly – be prepared!

15 March 2013

In brief: The first of the new generic Top-Level Domain extensions will soon go live, and now is the time for brand owners to implement their brand protection strategies. There have been almost 2000 applications for new TLDs and it is expected that hundreds of new TLD registries will be open by the end of the year. Partner Tim Golder (view CV) and Senior Associate Mark Williams explain why it is of paramount importance that brand owners take steps to ensure the protection of their brands at the second level of the new domains and what those steps should be.

What does it mean?

New generic Top-Level Domain (gTLD) applications for generic terms such as .food, .clothing, .insurance and .bank mean that third parties will be able to register domains that include your brand at the second level. For example, we would be pretty upset if somebody else sought to register www.allens.lawyers, www.allens.legal or www.allens.law.

What can you do?

To protect against inappropriate use of third-party trade marks, ICANN (the Internet Corporation for Assigned Names and Numbers) has initiated the Trademark Clearinghouse due to open later this month.

The Trademark Clearinghouse will allow trade mark owners to submit their registered trade marks into one centralised database, prior to and during the launch of the new gTLDs. The benefits of submitting your marks to the Trademark Clearinghouse are two-fold:

  • Sunrise Period – this will provide trademark holders with the first right to register the domain name within the first 30 days of operation of the new Registry;
  • Trademark Claims – this is a notification service whereby a domain name applicant will receive a warning notice when attempting to register a domain name that matches a mark in the Clearinghouse. If, after receiving and accepting the notice, the domain name registrant continues with the application, the trade mark holder will receive notification of the application – provided the application is within the first 60 days after the end of the Sunrise Period.

Please go to our Fact sheet on the Trademark Clearinghouse. If you would like further information about how Allens can assist you with the Trademark Clearinghouse, please contact one of the partners listed below.

For further information, please contact:

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