Bill d’Apice
1 October 2011

Trade Marks update: New Generic Top-Level Domains provide opportunities and potential threats

Bill d’Apice


Tel: 02 9233 9013

Mob : 0411 825 814



Charities and Not-For-Profits


Corporate and Commercial

Pro Bono and Corporate Social Responsibility

At the beginning of 2012 the Internet Corporation for Assigned Names and Numbers (ICANN) will open up an opportunity for organisations to register as registered operators of new generic top level domains (gTLDs).

This will be an exciting time for those organisations that can afford the application fee of $USD185,000.00 and the annual registration fees of $USD25,000.00, but it will affect most Not-For-Profit organisations in quite a different way.  At the very least, it presents the possibility that Not-For-Profit organisations may register domains in the future such as:


(for those Not-For-Profit and religious organisations that can afford the fees and the ongoing maintenance of running a gTLD).  If religious organisations did not have the resources or wish to expend considerable amount in registering and running a gTLD, they may be able to obtain permission from a gTLD operator to use a gTLD such as “church”.

We suspect that the main interest for Not-For-Profit organisations and religious organisations in this process will be to undertake two significant tasks:

  1. reviewing applications for gTLDs on the ICANN website enabling them to lodge an objection to the acceptance of the application for the gTLD on the basis that it would infringe registered trade marks owned by the Not-For-Profit or religious organisation; and
  2. during the sunrise period (which is the period shortly after the application for agTLD has been accepted, but before it has been formally launched on the internet), reserving new domain names or preventing others from registering domain names in such a way that may harm the reputation of the organisation, or infringe its trade marks.

In relation to the first task, it will be possible to object to such applications if it can be demonstrated that the application takes an unfair advantage of the distinctive character or the reputation of a trade mark, or it impairs the distinctive character or reputation of a trade mark, or, if it generates an impermissible likelihood of confusion between the trade mark of the organisation and the proposed gTLD.

In relation to the second task, organisations will have two options:

  1. they can actively review applications for domain names as they appear on the website of ICANN; or
  2. they can participate in a trade mark claim service, whereby the organisations would submit their registered trade marks to a trade mark clearing house. In that situation, the gTLD registered operator can notify them when an existing or proposed domain name resembles an existing registered trade mark.

The post-delegation dispute resolution procedure will be triggered for anyone who wishes to object to a successful application to be a gTLD registered operator.  During this process, written submissions need to be prepared and an expert will be appointed to determine the matter between the parties.  It is possible through this process to secure outcomes whereby the gTLD operator’s registry agreement is terminated.

Those who are interested in registering as a gTLD operator need to think immediately about preparing the lengthy application required to be lodged between 12 January 2012 and 12 April 2012.  We expect that this will affect only a few Not-For-Profit organisations.

For those that wish to review the applications received by ICANN – these organisations should monitor the website of ICANN ( or instruct a lawyer to monitor the applications for any potentially infringing or reputation/harming applications.

Those wishing to participate in the trade mark clearing house should keep in touch with the news bulletins on the ICANN website so as to be informed immediately of the process once it is implemented.  It will also allow organisations to be fully be apprised of the intended sunrise period if they wish to reserve relevant domain names.

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