Brand Owners Take Note: New Domain Names Mean Big Changes

Just when you thought domain name enforcement couldn’t get more expensive, ICANN presents: the New gTLDs! Starting January 12, 2012, ICANN began accepting applications for new generic top level domain (“gTLD”) names, only now some will not be so generic.” In addition to the gTLDs we are familiar with, such as .com, .org, .net, and .mobi, available gTLDs may include brand names such as .“kelleydrye. ” or “.yourbrand,” or community or industry identifiers such as “.beauty” or “.basketball.”

Even if your company decided not to apply for a new gTLD, there are important steps you should take to protect your company’s brands.

  • On June 13, 2012, ICANN is scheduled to publish information regarding the new gTLD applications, including who filed applications and which .brand or .generic strings each seeks to register.
  • Brand owners and other potentially affected parties have a limited time to raise concerns and objections regarding a gTLD application after the publication date via ICANN’s dispute resolution procedures and Public Comment Period.

All brand owners should prepare themselves accordingly:

  • Obtain advice from an attorney who is well-versed with the new gTLD procedures
  • Identify any gTLD applications which are of potential concern to your company
  • Submit comments before the 60-Day Public Comment Period – closes August 12, 2012
  • Initiate Formal Objection proceedings – beginning June 13, 2012
  • Register your marks with the Trademark Clearinghouse

Kelley Drye’s Intellectual Property and Technology Litigation team has been working with applicants for new gTLDs and providing seminars for brand owners regarding the application and objection process. Please contact partner Andrea Calvaruso in our New York office or partner Nancy Lutz in our D.C. office for more information and assistance.