IP Alert: New Domains Present Opportunities and New Risks for Trade-mark Owners


On the electronic frontier, the domain name space is opening up again. But this opportunity is also a worry for trade-mark owners who want to protect their brands online. They’ve invested significant resources in their brands and secured domain names that correspond to their trade-marks in prominent generic Top-Level Domain Name registries (gTLDs) such as .com and country-code Top-Level Doman Name registries (ccTLDs) such as .ca. For example, the owner of the BRAND trade-mark has likely secured second level domain name registrations for the domain names brand.com and brand.ca.

On June 20, 2011, ICANN, the Internet Corporation for Assigned Names and Numbers, the not-for-profit corporation that manages the domain name system, announced that it will accept applications for new gTLD registries. The owner of the BRAND trade-mark will be able to apply to operate the .brand domain name registry. While this is expected to dramatically increase the number of gTLDs, the significant application costs will likely be prohibitive for most trade-mark owners. The availability of new gTLD’s won’t affect the way the Internet operates but will likely have a significant effect on how people find information and how trade-mark owners manage their online presence.

The initiative raises two potential concerns for trade-mark owners: first, how do I secure a gTLD that reflects my trade-mark; and second, how do I prevent others from trying to capture my trade mark as a gTLD or a second level domain within one of the new gTLDs?

Please see full alert below for more information.

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