Trademarks owners have a new challenge

by Sandra Leis

June 01, 2011


Besides worrying about marketing, advertising, competition and counterfeiting of their products, business people should pay special attention to monitoring their trademark on the internet platform, which is expanding every day.

While the internet is a useful tool for disseminating a trademark, it can bring about many problems for trademark owners, especially when the trademarks have attained some degree of recognition and are often used by third parties without permission.

It is difficult to combat the unauthorized use of trademarks and the registration of domain names containing third parties’ trademarks for the purpose of diverting consumers, among other common practices on the internet. This task has recently gained a new dimension with the release of new possibilities for domain registration by ICANN – the agency that regulates the internet.

The first new concept is the creation of the suffix ".xxx" for sites with pornographic content which will be managed by ICM ( Trademark owners will have to prevent third parties from registering their marks and avoid its association with pornography by reserving or blocking the ".xxx" extension. This will begin next September.

The other new concept is the availability of "new gTLDs" or new Top Level Domains. At present, there are approximately 21 top level domains or extensions such as. ".com". ".net." and ".edu", etc..  Recently, however, ICANN approved the permission to register top level domains freely.  Thus, a company may create a top level domain with its own trademark, for example, .mytrademark.  The new "gTLDs" may also contain non-Latin characters, for example, Arabic or Chinese.

The registration period for new "gTLDs" will take place from January 12 to April 12, 2012 and will cost at least $185,000. Until then, ICANN and other organizations will be holding seminars in order to clarify the many doubts and concerns that businesses will have surrounding this matter. In addition to being expensive and complex, the registration of such new "gTLDs" requires that the applicant takes on a series of responsibilities and is structured to operate the extension.  Details on the subject are available in the "Applicant Guidebook" at

The good news for trademark owners is that the procedure for registering the new "gTLDs" foresees the possibility of objection to a domain when it infringes a third party’s rights and a mechanism for dispute resolution.


Sandra Leis

Advogada, Agente da Propriedade Industrial

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