Between June 2012 and March 2013, trademark holders could file objections to new generic top-level domains applications before the World Intellectual Property Organization (WIPO). Overall, 69 objections have been filed, among which only six were not achieved.
The rulings were made by 49 experts, well-known for their consistency and expertise, and decisions were taken by panels of one or three experts. They based their ruling on the gTLDs Applicant’s Guidebook available here. For an objection to be upheld, it had to prove that the applied-for gTLD:
Took unfair advantage of the distinctive character or the reputation of the sign, or
Unjustifiably impaired the distinctive character or the reputation of the sign, or
Otherwise created an impermissible likelihood of confusion with the sign.
According to Erik Wilbers, director of WIPO Arbitration and Mediation Center, “this test reflects the particular dynamics of the use of trademarks on the internet”.
The signs used as a basis for the objection could either be a trademark or a name or acronym of an Intergovernmental Organization (IGO). However, objections were won only where there was proof of substantial use of the early sign. As a result, experts rejected objections based on trademarks, registered only as a means of blocking an application. The objector’s good faith was therefore a determining criterion for experts.
Half the cases were filed by complainants in the United States, and two thirds were filed by another applicant to the same string. The report further states that most of the objections were related to common words registered as trademarks, such as <.home> or <.music>. According to the report, the <.direct> gTLD was applied-for with the sole purpose of infringing the rights of “The DirecTV Group”. Hence, the experts upheld the objection.
Overall, only four objections have led to the revocation of applications for new gTLDs.
Although mediation procedures and hearings were provided for by the Applicant’s Guidebook, they have not been used during the objection procedures.
The existence of the pre-delegation Legal Rights Objections mechanism, including published decision criteria and consideration factors, has prevented a number of potentially improper gTLD applications from being made.
Since the launch of ICANN’s New gTLD Program in 2012, the domain name landscape has undergone a profound transformation. This initiative has enabled the introduction of hundreds of new thematic, geographic, and sector-specific extensions (.shop, .paris, .app, .law, etc.), offering businesses enhanced opportunities for online positioning. However, this diversification has also brought increased risks of cybersquatting and brand infringement, compelling rights holders to adapt their protection strategies.
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) remains the central, globally recognised mechanism for resolving disputes over domain names registered in bad faith, whether they involve legacy extensions (.com, .net) or the new gTLDs. Today, the UDRP must address a rising volume of disputes and increasingly varied contexts, requiring more tailored approaches.
This article provides a comprehensive overview of developments since the landmark Canyon.bike case in 2014, examines recent trends in UDRP disputes involving new extensions, and outlines strategic recommendations for trademark owners in 2025.
Context and scope of the UDRP for new extensions
Adopted by ICANN in 1999, the UDRP applies to all generic top-level domains (gTLDs), whether they are legacy extensions or part of the New gTLD Program. It allows a trademark owner to obtain the transfer or cancellation of a domain name where three cumulative conditions are met:
The domain name is identical or confusingly similar to the trademark;
The domain name holder has no rights or legitimate interests in respect of the domain name;
The domain name has been registered and is being used in bad faith.
This framework applies to all new extensions, thereby ensuring legal consistency on a global scale.
Evolution of new extensions since 2014
Growth and diversification of gTLDs
Since 2014, the number of available extensions has increased dramatically, now exceeding 1,200 delegated gTLDs. These fall into several categories:
Thematic extensions (.shop, .tech, .app) targeting specific industries;
Geographic extensions (.paris, .london) highlighting local presence;
Community or specialised extensions (.law, .bank), often subject to strict eligibility requirements.
Trends and most-used extensions
Some new extensions have quickly gained prominence due to their universal appeal and marketing potential, such as .xyz, .online, and .shop. These have also become prime targets for cybersquatters, necessitating enhanced monitoring measures.
Case law and landmark decisions
The Canyon.bike case (2014)
This decision remains the first known UDRP case involving a new extension. It confirmed that the extension itself does not influence the assessment of similarity between the trademark and the domain name: the decisive element is the string to the left of the dot.
Recent jurisprudential developments
Since 2014, numerous cases have involved new extensions. UDRP panels apply the same criteria to recent gTLDs as to legacy ones, while considering the specific context of certain extensions, particularly when the extension reinforces the association with the trademark’s industry sector. Decisions also show heightened vigilance toward multiple registrations across different extensions targeting the same brand.
Issues and strategies for trademark owners
Monitoring and anticipation
The proliferation of extensions makes it essential to implement automated and targeted monitoring of trademark terms across all relevant extensions.
Selecting the appropriate procedures
Depending on the case, several options are available:
UDRP: to obtain permanent transfer or cancellation;
URS (Uniform Rapid Suspension): for clear-cut cases of cybersquatting, enabling swift suspension;
Local procedures: such as Syreli for .fr, when the domain name falls under a ccTLD.
Building strong cases
The success of a complaint hinges on demonstrating all three UDRP criteria with clear, tangible evidence of the trademark’s reputation and the respondent’s bad faith (e.g., multiple registrations, deceptive use, redirection to competitor websites).
Conclusion
New extensions offer businesses unprecedented opportunities for online visibility but also open new fronts for rights infringements. The UDRP remains as relevant and effective as ever, provided it is integrated into a comprehensive strategy combining monitoring, rapid action, and careful selection of dispute resolution procedures.
Dreyfus & Associés assists clients in protecting and defending their rights across all extensions, in partnership with a global network of intellectual property law specialists.
Nathalie Dreyfus, with the support of the entire Dreyfus team
FAQ
What is a new gTLD?
A generic top-level domain introduced after 2012, such as .shop, .paris, or .app, expanding the range of available domain name choices.
Does the UDRP apply to new extensions?
Yes. It covers all ICANN-approved gTLDs, whether legacy or new.
Should all extensions be monitored?
It is advisable to target the extensions most relevant to your sector and market to optimise monitoring costs and effectiveness.
Can multiple domain names be challenged in a single procedure?
Yes, if they are registered to the same holder and circumstances justify joint action.
How can a respondent’s bad faith be proven?
Through evidence such as the trademark’s reputation, redirection to a competitor’s site, or offering the domain for sale at an excessive price.
Established in 1998, ICANN regulates inter alia the allocation of domain names on the Internet. It has global jurisdiction and its decisions are binding de facto on States. Nevertheless, ICANN is a corporation created under Californian laws, which is hence subject to the California Attorney General and which ultimately falls under the United States Department of Commerce.
And this is all that is alarming the European Union. Following revelations of large-scale surveillance by the U.S National Security Agency, the European Commission is concerned about the lack of transparency of Internet governance. In a press release dated February 12 2014, it proposed a major reform, calling for “a more transparent, accountable and inclusive governance.”
The Commission proposes in particular concrete actions such as the establishment of an agenda for the change in the management of ICANN and IANA (Internet Assigned Numbers Authority), the creation of guidelines for Internet governance, or the establishment of a global process for major decisions. The main objective is to empower the various Internet actors.
In this regard, the Vice-President of the Commission Neelie Kroes stated that “the pluralism of actors on the Internet is an excellent driving force for innovation” and that “Europe must play a strong role in defining what the net of the future looks like.”
In the wake of revelations of large-scale surveillance and the arrival of new domain name extensions on the market, transparent and accountable governance appears to be essential.
Amendments regarding industrial design law recently came into force in Montenegro. Industrial design owners wishing to file infringement lawsuits are offered new opportunities.
Previously, an action could be filed within 5 years as from the date of infringement. Henceforth, if the infringer has acted in bad faith, a lawsuit can be filed at any moment during the design protection period, to wit, within 25 years posterior to the filing date.
The owner may in addition of damages claim compensation, evaluated on the basis on a licence agreement which has been concluded.
Finally, if the owner proves that the infringement has been committed during a commercial activity or with the aim of obtaining economic or commercial benefits, the Court will be able to order the seizure of the defendant’s movable and immovable properties, although he is not directly linked to the design infringement.
The new gTLD domain names like .HOME, .BIKE or .PARIS are emerging on the market. Some take advantage of these launches to infringe well-known trademarks and domain names with these gTLD are already subject to UDRP procedures.
On 5 February, the domain name <canyon.bike> has been registered by a privacy shield service at the registrar Godaddy.com.
The German company Canyon Bicycles GmbH has promptly filed a UDRP complaint (Uniform Domain Resolution Policy) at World Intellectual Property Organisation (WIPO). The company intends to act under its intellectual property rights as it is the holder of several Canyon trademarks since 1993.
This complaint is the first UDRP procedure since the introduction of the new gTLD domain names on the market. IBM has also filed two complaints concerning the domain names <ibm.guru> and <ibm.ventures>. However, it concerns the URS procedures (Uniform Rapid Suspension). Unlike the UDRP procedures, the aim is not to result to the transfer or cancellation of the domain name but simply to obtain its suspension. On 12 February, the expert of National Arbitration Forum (NAF) has favourably acceded to the request of IBM and has ordered the suspension of the two domain names.
More than 1000 gTLD domain names will be spread out the coming months and along with these expansions conflicts will intensify. It will be interesting to see which of them will have an interest for the registrants as for the gTLD .CO. The registrant of the domain name <tes.co> was considered infringing the trademark of the company Tesco whereas the extension was not taken into consideration during the assessment of the similarity between the trademark and the domain name.
In the United States like in Europe, the approval of a drug brand name faces many obstacles. Beyond the classical requirements for any trademark filing, the registration of a trademark for a drug largely depends on the approval of the Food and Drug Administration (FDA).
The FDA examines several criteria. First and foremost, the deceptiveness of the sign and the likelihood of confusion (mainly with another drug on the market), are analyzed to ensure safety and to prevent medication errors. Other tests are conducted on packaging, patient populations, generic names, dosage strength or even handwriting. It is indeed essential that the prescription be fully understood by doctors and by the chemist delivering the drug to the patient.
This procedure is fully funded by the PDUFA (Prescription Drug User Free Act), which also obligates the FDA to reach performance goals. Since 1992, this process halved the time it takes for a drug to be approved in the United States. However, a drug trademark will be registered only when the component will be authorized by its agent.
An emergency procedure also exists as regard to treatment of life-threatening diseases which shows a unique potential clinical success. The outcome of this procedure might be disadvantageous for candidates following the ordinary process. A trademark filed with the emergency procedure has priority, even if the application is subsequent.
Due to these monitoring, only 40% of applied drugs names are registered as trademarks – safety of patients being a priority.
By virtue of Federal Law No. 194-FZ adopted on 23 July, 2013, Russian authorities decided to increase fines in case of trademark infringement. The implementation of stricter sanctions aims at deterring third parties from distributing counterfeit goods.
The new Article 14.10 of the Russian Code of Administrative Offences provides new penalties for trademark infringement. These will be proclaimed in case of illegal use of trademarks, appellations of places of origin, production and distribution of counterfeit goods.
Previously, the Russian legislation made no correlation between the amount of fine and the price of infringing goods. It presently differentiates between the penalties depending on whether it is being incurred by the company or its executive businesses. A company will have to pay triple the price of goods with a minimum amount of RUB 40,000 (approximately EUR 850) and counterfeit goods will be seized. Business executives will have to pay twice the price of the counterfeit goods with a minimum amount of RUB 20,000. Finally, individuals will only have to pay the price of the goods with the minimum amount of RUB 2,000 (approximately EUR 50).
Although the struggle against trademark infringement is difficult in Russia, these measures are welcomed and should have a deterrent effect for some.
While the new top-level domain names extensions appear on the market, the Trademark Clearing House (TMCH) has revealed a report highlighting an alarming risk of cybersquatting in relation to major US companies’ domain names.
The TMCH is a mechanism set up by ICANN allowing the protection of trademark owners in the expansion of new top-level domain names. It allows the reporting of data related to trademarks in a centralised database before and during the launch of new top-level domain name extensions.
The TMCH study made on new extensions like <.web>, <.online>, <.blog> <.shop> and <.app> demonstrates that United States’ 50 most famous brands have all been pre-registered by unofficial parties. It further reveals that half of these trademark owners do have any principle domain names in existing extensions like <pepsi.us> or <kelloggs.net>. Also, Jonathan Robinson, Strategic Consultant to TMCH considered that “all brand names are at risk of intellectual property infringement online as the new TLDs are rolled out”.
Nonetheless, mechanisms have been set up to prevent these types of situations. Registration at TMCH therefore allows trademark owners to enforce their brands and to benefit from a preferential right of reservation during the priority period of Sunrise. Registration at TMCH also allows to be informed of all undue registration of domain names reproducing or imitating a trademark. Jonathan Robinson further stated that “prevention is better that cure” and that “by recording marks in the Clearinghouse, businesses will be safe in the knowledge that they have made the cornerstone investment in brand protection in new TLDs”.
More than 80% of the major US brands have already acceded to alternative dispute resolution procedures relating to domain names such as UDRP procedures. While cases of cybersquatting are expected to increase with the new top-level domain name extensions, the TMCH’s objective is to prevent such litigations.
If the aim of cyber squatters is to divert internet traffic on their websites by means of suggestive domain names, the medium-term objective is to negotiate at a reasonable price the domain names registered without the brand owners’ knowledge. The role of the TMCH in this context is essential for brand owners.
Dreyfus & associés is a TMCH accredited agent. For more information, please do not hesitate to contact us.
After ten years of ongoing dialogue, the European Union and China have signed an agreement to strengthen their cooperation on the protection of intellectual property rights, last December. The collaboration extends to all fields of intellectual property through the implementation of twenty framework activities, with an overall budget of 10 million euros over the next three years.
The agreement provides for the adoption of relevant European and Chinese laws, in line with a close collaboration between authorities, the publication of intellectual property databases as well as an enhanced cooperation on customs matters. In an environment of digitization, the objective is to pool resources for the protection of innovations. The agreement also promotes economic and commercial development between the EU and China in the long-run.
The European Union and OHIM experts are already in Beijing, in order to implement the collaboration with China. OHIM President, António Campinos, stressed on “the importance of the EU-China cooperation in a globalized economy”.
This collaboration follows a previous agreement signed in 2009 between China and the European Union.
On the 11th of April 2013, the Court of Justice of the European Union in the case of ASA Sp. Z o.o. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) has pronounced itself on the likelihood of confusion existing between the trademarks FEMIFERAL and FEMINATAL both filed in class 5 concerning pharmaceutical products for children.
The company ASA Sp. Z o.o. has filed the trademark “FEMIFERAL” with OHIM on 18 September 2006; however, Merck sp. Z o.o. who is the proprietor of the prior trademark FEMINATAL has rapidly initiated an opposition proceeding. OHIM has then ruled in favour of Merck sp. Z o.o. on 19 November 2010.
The company ASA Sp. Z o.o. has challenged the OHIM and the General Court of the European Union upheld through the decision of Asa/OHMI – Merck on the 22nd May 2012 rejecting all its demands; formed an appeal in front of the Court of Justice of the European Union (CJEU).
The Court rejected the appeal ruling that the trademarks were similar and constituted a likelihood of confusion. The Court did not retain the argument that the prefix “FEMI” will be understood by average consumers as being products dedicated to women, hence, despite of its location in the pharmaceutical field, it is referring to average consumers and not to the relevant public.
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Written by Nathalie Dreyfus03/04/2014 
Between June 2012 and March 2013, trademark holders could file objections to new generic top-level domains applications before the World Intellectual Property Organization (WIPO). Overall, 69 objections have been filed, among which only six were not achieved.
