“.yourtrademark” - New Generic TLDs - Will a Revolution start on 12 January 2012?

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Our recommendation: Join the Munich conference to be held in English on 26 - 27 September 2011. For more information and reduced attendence fees for LexDellmeier Blog readers (special thanks you to the host of this outstanding conference, United Domains) - see links at the end of this article.

On 20 June 2011 ICANN (Internet Corporation for Assigned Names and Numbers) has deliberated to launch the so called New Generic Top Level Domains (TLDs).

New Generic Top Level Domains means that any word in any language can be used as a TLD. For trademark owners this new concept brings new possibilities, but also new risks.

Instead of using your trademark a.e. ”LexDellmeier” under a TLD like .com or .de, the trademark itself becomes the TLD a.e. “something.lexdellmeier”. Sounds great? Yes, because in theory it gives the owner of a TLD infinite possibilities to expand and tailor the own web presence according to the needs, e.g. franchise owners, sales offices etc.. No, because it is not that easy to obtain a TLD and there are numerous legal questions that are unanswered and can potentially lead to conflicts of which the outcome is unpredictable.

So how can one obtain a New Generic TLD?

Getting a New Generic TLD is not as easy as registering a domain name under an already existing TLD such as a.e. “.com”. ICANN has established a very detailed procedure according to which a potential applicant has to apply to form and operate a New Generic TLD. That means, unlike any other domain registration, where an applicant can simply register what is still available, a New TLD will only be assigned to an applicant if ICANN assessed him to be suitable. How this assessment will take place is described in the 352 pages Applicant’s Handbook. The main elements of an Initial Evaluation are the quality of the string and the technical, operational and financial capacity of the applicant to operate a registry.

According to the timeline published by ICANN the application period will begin on 12 January 2012 and will close on 12 April 2012. In the following the applications will be published on ICANN’s website and this is the moment when trademark owners, who see an infringement of their rights can object to the respective applications.

The evaluation process is expected to last from 8 to 18 months. There are several stages that an application might be required to pass through prior to a final determination being rendered.

The "basic" fee will be US$185,000. Applicants will be required to pay a US$5,000 deposit fee per requested application slot when registering. The US$5,000 will be credited against the evaluation fee.

Needless to say that the existence of these New TLD leads to numerous legal and factual questions such as:

What will happen if a.e. BMW registers “.auto” or “.car”? How will competitors like Audi react?

What will happen to identical brandnames that are registered for different companies in different classes such as “Triumph”?

What strategies will the companies adopt with regard to the New TLDs?

Those and many more will be discussed in an upcoming conference in Munich  held in English on 26 and 27 September 2011.

LexDellmeier will attend this high profile conference which will give background information on legal and technical aspects and opportunites to network. All trademark owners who are interested in obtaining a New Top Level Domain should attend. Click here to register your attendance.