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New Top Level Domains Will Increase Risk of Online Trademark Infringement

The Internet Corporation for Assigned Names and Numbers (“ICANN”), the organization responsible for overseeing the world’s domain name system, recently made hundreds of new generic Top Level Domains (gTLDs) available for registration, a significant expansion of available Internet addresses and an increased risk of online trademark infringement. Companies should follow developments in the gTLD rollout to determine whether any of the proposed gTLDs infringe their trademark rights. Additionally, once the new gTLD registries are operating, they will require additional trademark policing.

Currently, the most popular gTLDs are those with the extensions .com, .net, and .org. There are also nineteen other generic extensions available for domain name registration, such as .aero. In addition, there are hundreds of country-code Top Level Domains (ccTLDs), such as .us (United States), .euro (Europe), and .es (Spain), available for registration.

Now, ICANN plans to allow anyone with the ability to operate a new gTLD, to pay the $185,000 application fee and to pay the $20,000 annual fee to apply for gTLD of their choosing (e.g. .nfl). The first round of applications, for up to 500 new gTLDs, will begin in January 2012 and will run for three months. Additional rounds of applications are likely to follow. Once the applications are evaluated and approved, the operators will be able to register domains under their new gTLDs to third parties.

The new gTLDs can take any form, from generic terms (.football) to non-generic brand names (.coke). Operators of the new gTLDs will manage the gTLDs as domain name registrars, just as registries today manage the .com extension and other existing gTLDs. Although not yet finalized, procedures and protections will be made available during the gTLD application process in an effort to minimize incidence of trademark infringement. Also not finalized, but under consideration, are procedures to protect trademark rights as domain names become available for registration once the new gTLDs are operating.

Contact Joseph S. Heino ( at 414-225-1452 or your Davis & Kuelthau attorney with any questions regarding the new gTLD rollout by ICANN.