More domain name headaches for trade mark owners?

Greg Adams comments here on the “recent .co virtual land grab”. Computerworld reports that “More than 39,000 organizations applied for .co domains during a ‘prelaunch’ phase for signing up big-name companies”. While this is great news for Columbia’s domain registry, it is just another potential headache for businesses trying to protect the identity of exising domain names and trade marks.

[ On a related issue, see my Computerworld article on AdWords and trade marks ]

A quick check on the .co whois server shows some popular .co.nz names now registered as .co’s by registrants that appear to be someone other than the New Zealand company, including nzherald.co, tvnz.co and blackcaps.co. Of course, the presence of a .co registration should not presume any illegitimacy or trade mark issue. Trade marks are territorial, and how the (global) domain name is used in a particular region (if at all) is what will be relevant.

Even more headache inducing (or wonderful, depending on ones view) is ICANN’s proposal to allow the creation of new generic top level domains (gTLDs) for “branding purposes” – i.e. vanity domains. As ICANN says:

Brand holders and organizations seeking to manage their own name as a top-level domain may have an interest in securing these rights in the early phases of the new gTLD program for future branding purposes. With the limited availability of .com domain names, some companies may opt to become early adopters of new TLDs to satisfy their marketing needs. There will also be opportunities to apply for community and geographic top-level domains, such as .blog, .brand, and .city.

For example, it is reported that IBM is likely to apply for the .IBM top-level domain. Someone could apply to register .kiwi (a popular trade mark) as a gTLD. Of course, for contested trade marks this could prove rather fraught. However, it will not be as simple as registering a normal (second/third level) domain name. To register a custom gTLD you will effectively need to become a accredited registrar and sign a contract with ICAAN.

The International Trademark Association recently expressed its concerns that the proposal could lead to cybersquatting mischief. ICANN, chaired by New Zealand barrister Peter Dengate Thrush, is expected to make a decision on its trade mark policy for the new gTLDs soon, although some remain concerned that “trademark concerns will be noted and then brushed aside”.

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