ICANN, the non-profit Internet Corporation for Assigned Names and Numbers, which coordinates the Internet’s domain addressing system, is currently working on a plan to expand the present number of domains. The Internet has 21 generic top-level domains (gTLDs), such as .com, .net, etc. ICANN’s proposed plan will expand that number significantly by creating entirely new domains anywhere from three to 63 characters long and in nearly any alphabet.
According to ICANN’s brief summary of the plan, the purpose is to allow for more innovation, choice and change to the Internet’s addressing system. But many concerns were raised during the first public comment period, which just ended, among them being “brand protection issues and the impact on brands and trademark owners.”
The lawyers over at the Intellectual Property Law Blog wrote this nice article summarizing the plan’ s potential impact on trademark owners.
One potential impact is a dramatic increase in trademark infringement:
…the plan also presents a minefield for the unwary mark holder. Trademark owners are already required to be hyper-vigilant in defending their marks against infringement, cyber-squatting, and other sources of online consumer confusion. Under this regime, the burden of policing not only remains on the holder of the mark, but will likely increase exponentially. With every new gTLD comes the potential for drastically higher incidences of infringing and/or confusing domain names.
Also, trademark owners will have to independently monitor — at a hefty price — applications for new domains to protect their own marks.
Mark owners will be responsible for monitoring new applications and must assert timely objections when they identify potentially infringing new domain names. Incidentally, each objection-related filing comes with a fee of $5,000, both to make an objection as well as to defend against one.
The proposed plan is not yet final. According to ICANN, it will consider the first round of comments and provide a comprehensive analysis in early February, after which there will be another round of public comments. ICANN is also planning events in different global locations to further explain the plan.
We’ll check back in with ICANN in early February to read their analysis and post any updates here.
If you’re really interested in seeing the details of the proposed plan — ICANN calls it a “Draft Applicant Guidebook,” check out this link.
Although the costs for trademark holders are real, the need for new TLDs is real too, to promote competition in the domain name space. The process to introduce them is one of the original aims of ICANN and has been inching along for ten years now. At this point every concern has been aired multiple times, from all sides of the debate.
The ICANN process was one of deliberation by its equivalent of the general assembly, and arrived at after much debate, democratically: it wasn’t just decided by the Board.
The best thing for new top-level domains to do is to try to figure out how to preserve the rights of trademark owners without charging them a fortune. Unfortunately, the process of carving out infringing names *is* complex and costly. There isn’t a list of names that can simply be blocked, because while the trademark namespace is complex (a name may be “confusingly similar”), the Internet namespace in each TLD is simple — each unique string is unique as far as Internet routing is concerned.
Trademark owners have complained loudly about their costs but as yet no-one has come forward with a plan to help registries and registrars identify what is a trademark and what isn’t, and they are terrified to try because they have no competence in the matter and no authority to deny a domain name application — they could easily be sued for overstepping their bounds.
So while it is undeniable that new top-level domains will impose a cost on trademark owners, it’s also true that there aren’t good alternatives short of stopping the Internet from growing — and that isn’t a realistic alternative. We are seeing another collision between laws made for an earlier era (see “Music, sharing of”) and the reality of the modern day.
Antony, I agree that this is an example of a collision between law (in this case, trademark law) and the reality of the modern day (the necessary expansion of the Internet). As a general rule, law is slow to keep up with business. Perhaps this is because law is at its core a reactive mechanism.
As you point out, there must be a compromise in what has become a very long negotiation process between trademark owners, those promoting expansion of TLDs and other interested parties. From a trademark owner’s perspective, the concerns are infringement, confusion, and diminishment in the value of their marks. These concerns can be addressed by limiting the number of new TLDs.
Regarding the lack of a plan to help registries identify trademarks, that might stem from the fact that trademark law is so layered. In the United States, trademark rights can exist under common law, state law, federal law and even international law. Trademark laws are also different in each country. Meanwhile, ICANN is attempting to expand the Internet worldwide, which means that the new TLDs will have different legal implications in each country.
In the US, under our common law, trademarks rights can accrue simply by adoption and use of a mark. Prudent businesses seeking to adopt new marks perform searches that can be as vast as a business chooses, but often include the records in the USPTO, state trademark databases, common law records and domain names. New TLDs would mean that businesses would have to expand their searches further, and, has been pointed out, perhaps be more vigorous in proactively defending their marks.
Judging from your comments and website, you obviously know this subject matter extremely well and will be closely following ICANN’s plans. I look forward to reading more from you, and have linked to your blog at names@work.
Thank you for your kind response and for the link. I enjoy your blog even though I don’t live in Oregon.
[...] some background, this post follows up closely on my previous post a few months back about ICANN’s plans for expansion. As promised, in February ICANN [...]
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