Domain trademark holders deserve better protection
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Policies for Top Level Domain expansion put too much burden on trademark holders to defend themselves against infringing domain names.
Plans to expand the Internet’s generic Top Level Domain space have stirred opposition from trademark owners who will have to defend their brands, possibly at great expense, across hundreds of new domains.
The Internet Corporation for Assigned Names and Numbers, which is overseeing the gTLD expansion, has provided processes for resolving disputes and addressing abuses. But the processes primarily are reactive and put the burden of defense on owners of brands.
ICANN should step up and provide proactive protection to prevent the improper use of trademarks and brand names in new domains.The rules might yet change, but for the time being the best advice to owners of brands and trademarks is to study the ICANN Application Guidebook and familiarize yourself with the procedures and protections.
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Top Level Domains are the suffixes on URLs and e-mail addresses that appear to the right of the final dot in the address. Generic TLDs are broad categories that service large communities, such as businesses for .com, public service groups for .org, educational organizations for .edu, and government for .gov. There currently are 22 gTLDs. The goal is to expand opportunity and competition in the Internet space.
It is admittedly a little late to be objecting to provisions of the program. ICANN has been working on it for six years and the three-month window for filing applications begins Jan. 12. This will be followed by a seven-month objection period, and the first new domains could appear online by January 2013. Current estimates are that 500 to 1,500 applications will be received, for a filing fee of $185,000 each. ICANN has capped the number of new domains to be approved in this round of applications at 1,000.
But policies for the domain expansion still are evolving and it is not too late for ICANN to provide greater protection.
The problem faced by trademark holders was illustrated by the Council of Better Business Bureaus at a recent House hearing on the program.
Defensive registrations
“We own over 300 domain names and many of those are defensive registrations in TLDs where we have no intention of operating a website, but we nonetheless feel compelled to purchase in those TLDs to keep our trademarks out of the hands of fraudsters,” said Anjali K. Hansen, an intellectual property attorney for the CBBB. The number of defensive registrations required to protect trademarks could expand exponentially with the number of new gTLDs.
Companies and non-profits could be faced not only with the need to defensively register their trademarks as second level domains within the new gTLDs, but also to register them as new gTLDs at a hefty $185,000 fee.
Currently, ICANN will not block the registration of trademarked domain names and will not notify trademark owners of applications. “ICANN will publish the list of all applications received after the application submission period closes, and will continue to publicize the objection process and deadlines,” the organization said.
It will be up to the trademark holder to check the applications for infringements and file objections under the dispute resolution procedures. The procedure will be administered by third party contractors and the objector must pay a filing fee, which can be refunded if the objection succeeds.
“You must pay close attention to the objection deadlines that are publically available on ICANN's website,” the organization warns.
Registry operators for the new gTLDs also will have to handle trademark disputes if an infringing second-tier domain is registered. ICANN proposes setting up a trademark clearinghouse, to be operated by a third party, to support this process, but again the onus of objecting is placed on the trademark owner.
It should not be incumbent on legitimate organizations to defend themselves against abuse under this expansion. A policy prohibiting the registration of trademarked domain names or of confusingly similar names, either at the top or second level, should be established. Exceptions could be carved out for fair use cases, but ICANN and the new gTLD registries should accept responsibility for ensuring that the expansion of domains is not abused.