Protecting Your Trademarks as ICANN Launches New Generic Top-Level Domains

Last year, the Internet Corporation for Assigned Names and Numbers (ICANN) received over 1,900 applications for new generic top-level domains (gTLDs), including multiple applications for popular domains like .app, .inc, .art, .shop and .music. More than seven hundred applications have now passed an initial evaluation. If no further issues arise for those applications, ICANN anticipates that some of the new gTLDs could go live in the next few months.

Although the new gTLD program will provide businesses with more opportunities to register for industry-specific Internet addresses (such as domain names ending in .search, .map, .book and .app), the gTLD expansion will also create significant opportunities for bad-faith registration of second-level domain names (e.g., [TRADEMARK].[new gTLD]). Anticipating this problem, ICANN designed “rights protection mechanisms,” discussed in further detail below, to preempt or curtail some bad-faith behavior. The immense number of new gTLDs that are expected to go live, however, creates practical complications for trademark owners—particularly companies that have a large number of trademarks. In considering whether to take advantage of the rights protection mechanisms, such companies may want to focus their efforts on protecting a smaller number of key brands.

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