Applications will be accepted from the end of April (no specific date has been set) for a period of approximately three to four months via the platform https://newgtldprogram.icann.org/fr (costing approximately $227,000).
There will then be an auction period for the various applicants seeking the same extension.
Lastly, a list of accepted applications will be published (“Reveal Day”), allowing any third parties holding prior rights to challenge certain extension applications (presumably around October 2026).
Such challenges may be made by filing an LRO (Legal Right Objection) during a period known as the “Objections filing period” (which is expected to last approximately 90 days). These disputes will be managed by the WIPO (https://www.wipo.int/en/web/amc/domain-name-disputes/lro/index#lro00). Such an objection may only be raised on the basis of a “prior right”, namely a registered or unregistered trademark (where applicable, a trademark licensee should also be able to take action).
The “Applicant Guidebook” now provides further details on the assessment of the likelihood of confusion which should be carried out:
The panel hearing an objection on the grounds of infringement of another party’s rights must determine whether the applicant’s proposed use of the string:
- would take unfair advantage of the distinctive character or reputation of the objector’s trademark or service mark (the “mark”) – whether registered or unregistered – or of the name or acronym of the IGO, as set out in its constitution;
- would unjustifiably infringe upon the distinctive character or reputation of the mark or the name or acronym of the IGO;
- would otherwise create an unacceptable risk of confusion between the string and the mark or the name or acronym of the IGO.
The panel will consider the following non-exhaustive factors:
- whether the string is identical or similar to the opponent’s trademark, particularly in visual, phonetic or semantic terms;
- the objector’s good faith in acquiring and using their rights to the trademark;
- the degree to which the public recognises the sign corresponding to the string as a trademark of the objector, the applicant or a third party within the relevant sector;
- the applicant’s intention at the time of filing their application for the relevant string, in particular whether they were aware of the objector’s trademark or could not reasonably have been unaware of it, and whether they commonly seek to register or exploit gTLDs or registrations that are identical or similar to third-party trademarks;
- whether and to what extent the applicant has used, or has made verifiable arrangements to use, the sign corresponding to the gTLD in connection with a bona fide offering of goods or services, or a bona fide disclosure of information, without infringing the objector’s legitimate exercise of rights in their trademark;
- whether the applicant holds trademark rights or other intellectual property rights in the sign corresponding to the gTLD, and if so, whether their acquisition and use were in good faith and whether the intended use of the gTLD is consistent with them;
- whether and to what extent the applicant is commonly known by the sign corresponding to the gTLD and, if so, whether the proposed use of the gTLD is consistent with that reputation and is in good faith;
- whether the applicant’s intended use of the gTLD is likely to create a risk of confusion with the objector’s trademark as to the origin, sponsorship, affiliation or endorsement of the gTLD;
- whether the intended use of a common dictionary term, which is also a trademark, is intended to take advantage of its common meaning or targets the trademark as such.
CONCLUSION :
An objection system has been implemented to enable trademark owners to challenge certain applications that could infringe their rights. However, deadlines will be short and objection cases will need to be well-founded. We therefore recommend that you inform your legal adviser immediately of your intention to protect your rights, so that they can monitor the applications for new gTLDs.
