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New ICANN Domains and Trademark Registration

Monday June 20, 2011 at 11:10am

New ICANN Domains and Trademark Registration

The Generic Top Level Domain is about to become much more specific 'right of the dot' ...Instead of, .com and .org, ...think .anything you like!

The ICANN decision yesterday to permit any name, brand or text 'right of the dot' as from next year is focussing world attention on the absolute need of companies to protect their main brands by trademark registration which is the only way trademark owners be able to prevail over the potential loss of their marks to registrants of new domains.

This means that domain addresses will begin to operate much more in the nature of brands themselves.

Trademark owners should now be reviewing the scope of their existing registrations and making sure that they are sufficiently broadly registered to prevent them being incorporated into the new-style domains without necessarily infringing their current trademark registration.

Trademark owners will need to police their registered trademarks much more agressively and much more widely in order to ensure that their trademark registrations are not diluted or, worse still, potentially hi-jacked by registrants of creative new domains.

Indeed, it has been suggested that trademark owners may think about applying to set up their own domain name registries in an effort to retain control of their marks even though the entry cost for so doing will be USD185,000 with ongoing fees of at least USD25,000 per annum. 

Another threat to holders of brands already protected by trademark registration, is ICANN's determined policy that the right to obtain a domain during the sunrise period will be limited only to trademarks that are in actual use. At the ICANN meeting yesterday the debate on this point apparently raged for over an hour with ICANN not moving from their position that trademarks must be in use to be granted the right to early and exclusive registration during a sunrise

This policy reinforces the importance of international trademark registration at registries like USTPO where proof of use is a pre-requirement of acceptance for registration.

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