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New Domain Names Mean New Trademark Woes

Added by Bradlee R. Frazer in Articles & Publications, Business Law, Intellectual Property and Patent Law on July 24, 2012

Think your domain name and your own little corner of the Internet are safe? Think again.

One of the best pieces of real estate a business can own is virtual real estate on the Internet. A good website and a simple domain name such as [yourtrademark].com or [yourtrademark].net are easy and effective ways to attract and retain business. A big concern, however, is protecting your trademark from improper use on the Internet. Many times, a third-party will register a domain name either identical or confusingly similar to your trademark, which if done with unlawful intent is known as “cybersquatting.” So, while you may register [yourtrademark].com as a domain name, your customers might get confused by the cybersquatter’s site located at [yourtrademark].org, resulting in loss of business when Internet traffic is diverted to the cybersquatter’s site. To best prevent this, a trademark owner having a “.com” domain should take steps to ensure that no one has registered her trademark or a confusingly similar variant as a “.net,” a “.biz,” a “.org” or other domain name. The three letters that appear to the right of the “dot” in an Internet domain name are called Generic Top Level Domains (gTLDs).

Until recently, protecting your trademark against cybersquatting was fairly manageable given the finite number of gTLDs. Currently, there are 22 gTLDs, e.g., .com, .net, .org, and approximately 300 so-called country code Top Level Domains (ccTLDs), such as “.au” for Australia, and “.de” for Germany. But this is about to change.

On June 13, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) revealed over 1,900 new gTLDs (words to the right of the “dot”) that may soon become available for registration. These include gTLDs such as “.play,” “.shop,” and “.win.” Thus, if and when these new gTLDs are approved, businesses will be at risk of having domains such as [yourtrademark].play, [yourtrademark].sucks, or [yourtrademark].store taken over by someone else. Larger companies such as Apple and Amazon-being aware of the dangers posed by this increase in gTLDs-have gone as far as submitting their own applications to control relevant gTLDS such as “.apple” and “.amazon.” Click here for a complete list of the new gTLD applicants being reviewed by ICANN. Trademark owners must be vigilant to watch and see if someone attempts to register [yourtrademark].play or some other of the 1,900 possible new gTLDs.

For more information, please contact Brad Frazer or call 208.344.6000.