Protecting Your Trademark In Light of ICANN's New Generic Top-Level Domain Names

Domain names have become an important part of our commercial lives.  They act as designators of products and services and serve as shortcuts to reduce consumer search costs.  That is why trademark owners must be vigilant in protecting their trademark rights on the Internet.  On June 24, ICANN gathered to discuss adding new generic top-level domain names, or gTLDs, to the spectrum of available domain name suffixes.  When ICANN adds gTLDs, you can be sure that cybersquatters and typosquatters are watching because it presents them with a new opportunity to register the trademark of another to profit off of the goodwill and Internet traffic associated with the mark.  Domain name disputes inevitably follow the addition of TLDs, so it is important to hire an attorney that is proactive in monitoring the use of your trademarks on the Internet.

ICANN separates gTLDs into two categories: sponsored and unsponsored.  Unsponsored gTLDs consist of those suffixes that the average consumer is most familiar with, such as .com or .info.  Sponsored gTLDs are sponsored by a specific community, such as cooperatives (.coop), aviation (.aero), and mobile phone users (.mobi).  New gTLDs can be applied for; a new round of applications is expected to start later this year.  The only requirement is that you abide by ICANN's terms and sign a Sponsorship Agreement.

The importance of all of this is that trademark owners can presume that their marks will be registered under any new gTLDs, and the more powerful a mark the more likely it is to be registered and cybersquatted.  This presents a problem for trademark holders.  As stated over at Intellectual Property Watch,

Susan Kawaguchi, global domain name manager for online trading site eBay, said her company would have a look at all new TLDs, but would not register in every new zone. From her point of view special interest TLDs like .aero - the TLD for the airline industry managed by Air Transport Communications and IT solutions (SITA) - are acceptable for the owners of big brands, but new, open TLDs that allow registration by anybody (and not limited to a special interest group or community) would require either registering or enforcing.

“Either way it is a lot of work,” warned Kawaguchi. Brandowners, she said, are not prepared to provide income for the new generic TLD registries during their sunrise periods during which early name registrations can be made.

Some trademark holders are rightfully upset that they will have to expend more money to protect the use of their marks on the Internet,

Even more menacing sounded Jay Scott Evans, former chair of ICANN’s Intellectual Property Constituency and senior legal advisor for Yahoo. “Why should brand owners have to invest huge amounts of money to protect their brands,” he asked, simply because ICANN did not put the trademarks on a reserved list containing geographical names that all governments would have had to block in all TLD zones.

Whatever the correct answer is, ICANN's policies are the law of the virtual landscape.  That is what it is important to retain an attorney that is experienced with domain name disputes, actively monitors the use of your trademarks, and can proactively assert your rights in arbitration or under the Anticybersquatting Consumer Protection Act if necessary. 

Update: CNN is reporting that .sex, .flight, and .hotel are among the gTLDs being bantered around.  These could have extremely interesting consequences for trademark holders.  We will update our readers as more comes out of ICANN's Thursday vote.

Comments

[Johnny]

I am still searching for where they say it will be a "suffix", or new extension. I have not seen them specifically say it will be this, even though they write it in a implicit manner in which you would think it would be a new extension.

Maybe it will just be one word like "Coke" you will type in instead of coke.coke or coke.softdrink , etc.....

[can a domain name be trademarked?]

Yes, a domain name can be trademarked, or trademark protected. As long as the domain name reflects a source of goods and services, you can be trademark protected.

[ICANN Watcher]

This new ICANN policy is going to result in a lot more trademark squatting of domain names. We should see the number of disputes rise. ICANN certainly contemplated this when they decided to add domain extensions.