Brand owners need to be aware that the complex world of Internet domain name registrations is about to get more confusing. On Monday, June 20, the Internet Corporation for Assigned Names and Numbers (“ICANN”) approved taking applications for an unlimited number of generic Top Level (after the dot) Domains. Qualified registrars may apply for any string of letters after the dot, e.g. (dot)realestate, (dot)casinos, (dot)sports, (dot)toys, (dot)music, or (dot)movies. The new “gTLDs” are expected to increase competition and foster free speech, but they also present a much more difficult trademark enforcement environment as brand owners struggle to ferret out and shut down unauthorized use of their marks and sales of counterfeit goods and services on the web.
The first round of applications for the new gTLDs will be accepted beginning January 12, 2012 and will close April 12, 2012. Although the new gTLDs are characterized as “generic”, (dot)Brand TLDs are eligible and large brand owners should consider whether they want to own and run their own unique Top Level Domain. For example, Hitachi and Canon have already announced they will be applying for (dot)Hitachi and (dot)Canon respectively.
Short of establishing their own (dot)Brand Top Level Domains, brand owners will have to decide how best to enforce their trademarks and the authenticity of the goods and services associated with those marks in the new unlimited gTLD environment. Certain rights protection mechanisms have been negotiated by representatives from ICANN’s Government Advisory Committee (GAC), Business Constituency (BC), and Intellectual Property Constituency (IPC).
Clients are encouraged to evaluate the needs and opportunities presented by the new generic Top Level Domains in consultation with IP counsel well in advance. In general, registrars will only be required to apply the rights protection mechanisms associated with the new domains to nationally or internationally registered marks which owners must enter into a new “Trademark Clearinghouse”. Lewis and Roca is represented on ICANN’s Intellectual Property Constituency and will be participating actively on behalf of trademark owners to provide input into ICANN’s implementation of the new gTLDs.