In 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) will drastically expand the number of generic top level domains (gTLDs) available online, adding to .com, .net and others. This move will trigger new opportunities for cybersquatters and will require trademark owners to make decisions about where to commit their scarce resources. In this Analysis, Anne LaLonde discusses this important issue and what you can do to protect yourself and your clients. She writes:
General guidance for trademark owners on the gTLD influx
Potentially positive aspects
If the trademark owner obtains its .trademark gTLD and thereafter operates the registry for .trademark, it can protect itself from infringement and from another party using .trademark. This could be especially useful if the trademark is relatively weak and other companies may have some rights in the mark. However, this strategy may not be necessary if the trademark is strong. In that case, it is less likely that other applicants will apply to obtain .trademark because the trademark owner has a better chance of succeeding in an objection to the application.
Where the trademark owner decides to obtain the .trademark gTLD, consumers can go to its sites under that gTLD for authentic information and genuine goods. It can be a new marketing platform as well. It may be easier for customers to find the brand because, in theory, ICANN will not permit gTLDs that are confusingly similar. The mark owner may want to give second-level domains to licensees and perhaps even to fans. It will limit registration under its gTLD and design its own eligibility rules rather than making it available to all comers, as .com does.
Finally, the trademark owner may be able to obtain the gTLD of the generic term for its product, such as .computer or .toothpaste or .camera, which may attract additional business.
Potentially negative aspects
(1) Protecting trademark rights
Trademark owners must be prepared to protect their rights at two different points in time under the new procedure: protection of rights at the top level and, after the new gTLDs have been delegated, protection of rights at the second level.
Protecting trademark rights at the top level
First, at the application stage, trademark owners' rights could be threatened in the "top level" domain space, meaning, say, with applications for .nikon, .disney or .perrier. If an applicant applies to operate a new gTLD that is the same as, is similar to, or includes the trademark owner's mark, the mark owner should file a formal objection to halt the application.
Because of the large outlay of money, the requirement that applicants must be organizations rather than individuals, and the rigor of the process, garden variety cybersquatters should not be a problem at this stage. It is highly unlikely that an organization will really try to register .ebay or .burgerking, and those trademark owners may not need to go to the expense of registering such gTLDs themselves. But what about trademarks that are not inherently distinctive but may have achieved distinctiveness as to a certain good or service, trademarks that may be used by more than one company or that are also common nouns? Trademark owners with marks such as these may consider trying to obtain a gTLD identical to their marks before another party does so, rather than counting on succeeding in a formal objection.