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New Top Level Domains – Noerr expert warns against trademark infringements

July 2012 - Intellectual Property. Legal Developments by Noerr.

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On June 13, the Internet Corporation for Assigned Names and Numbers (ICANN) published the names of those who have applied for a new top level domain the ending of which may be geographic, such as "munich", industry identification such as "insurance" and even all trademark names and company descriptions such as "canon" and "adidas".

Companies and all other trademark owners must take very good note because it is also the start of a seven month period for objection. "When that period expires, trademark owners will not initially be able to prevent the infringement of their trademarks or company descriptions by one of the new Internet addresses", warns trademark lawyer Valentina Schulte-Braucks of the international law firm Noerr. 

Threat of various Legal Infringements

"It is important to react quickly and check your own trademark portfolio against the new endings", said Schulte-Braucks and advises companies and organisations to check at the latest starting on the "Reveal Day" whether trademarks are infringed. This check should include not only whether protected trademarks have been registered without justification as top level domains. Even if a change of Internet address does not appear to be in conflict at first sight, this can change after the conclusion of the process. Owners of the new top level domains can of course issue second level domains and trademark infringements could result there too. In addition, abbreviations in web addresses often cause a risk of confusion. How many companies could potentially be affected cannot be estimated at this stage. ICANN has announced that there are approx. 2,300 applications for the new top level domains. "Such a number of new domains will, without doubt, irreversibly change the Internet environment" said Schulte-Braucks.

If disputes about new top level endings arise, they will be resolved by arbitration. If the conflict relates to a possible trademark infringement, objections should be submitted to the WIPO in Geneva. If the trademark owner, however, misses the deadline or does not pay the fee in time, even that recourse will be closed. Companies which may be affected should inform themselves in good time about the formal requirements for the procedure and the costs.

Search Engine Ranking at Risk

Noerr trademark lawyer Schulte-Braucks also sees another danger. Changing the domain environment could affect a company’s ranking on the search engines. Users of search engines often use generic terms, for example, they enter not the name of a travel agency but only the term „travel" Securing such a popular search term as top level domain can, according to many search engine experts, create an advantage over the competition by being easily found.

The ICANN initiative opens the way for many new and individual Internet addresses. So far, Internet address endings have been country-specific or one of the 22 generic domains, such as .com or .org. In June 2012, ICANN decided that all companies and organisations can apply, at the latest in 2013, for other terms as top level domains.

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