ICANN's New Top Level Domains: Be Very Afraid—Your Trademarks and Web Addresses Are at Risk

Any website and trademark owner should be on alert to a huge change in the way the internet works: ICANN (the Internet Corporation for Assigned Names and Numbers, the people in charge of web addresses worldwide) will now be offering new Top Level Domains, meaning website addresses will no longer be limited to .com, .net, and .edu. ICANN will also be allowing internet addresses in any language, rather than limiting them to English characters, as it has done in the past.

So far, the system of internet address has been fairly stable, but ICANN is about to throw everything into chaos, allowing a potentially infinite amount of Top Level Domains. Possibly starting next year, this change has us and other trademark and intellectual property lawyers very worried about increased potential for cybersquatting, trademark infringement, fraud, and other internet crime. ICANN seems determined to go forward with the planned changes, as we were told last week by ICANN’s David Giza, Senior Director of Contractual Compliance.

Currently, there are twenty-one Top Level Domains available for domain-name registrations, including the most common examples of .com, .edu, .gov, .net, and .org. Such Top Level Domains are under the control of ICANN, which assigns the actual address of a website to its domain name.

Now, ICANN is putting up any Top Level Domain you want up for sale. If you have the $185,000 purchase price, you can own any combination of English or non-English characters to come after the dot in the internet address. So, for example, we could purchase our last name to create the following website address:

http://www.david.lynam

Top Level Domains that are currently in the works include: .eco, .sco, .berlin, .gay, .radio, and .sport.

What’s the problem, what you can do to prevent disaster, and ICANN’s proposed solutions, after the jump.

So what’s the problem?

The problem is that protecting your trademarks and business on the internet is about to get very complicated. Guarding your marks and web addresses from cybersquatters who buy up domains to confuse your customers, divert attention and clicks away from your website can be difficult and expensive.

New Top Level Domains will increase the possibilities for fraud on the internet—expect to get scam emails (known as a phishing emails) asking you to sign into your account at “chase.bank.” If it turns out that chase.bank is owned by a scammer, the owner could potentially steal your bank log-in information through such scam emails.

Worse, allowing new Top Level Domains will give cybersquatters infinite options to steal your web addresses and trademarks. For instance, even if McDonalds buys up the “.mcdonalds” Top Level Domain, it may have to fight http://www.mc.donalds, http://www.mcdonalds.burger, and so on. And all of those Top Level Domains may be owned by different individuals in different countries, complicating the process of enforcement even more. Further, the new Top Level Domains could be in non-English characters, so McDonalds would have to buy up “McDonalds” Top Level Domains in Chinese characters, Korean characters, Japanese characters, Greek characters, Russian characters, and so on.

Even if a company manages to track down every instance of such infringement in such website addresses, it is no easy task to track down the people behind the cybersquatting, due to difficulties in dealing with parties anywhere in the world.

What to do now?

What can you do now, as a business owner? Identify what you need to protect. If you haven’t already, adopt a mark, identifier, or slogan that identifies or describes your products or services to your customers. You may be selling products and services using a certain word, phrase, slogan, or logo. If so, then you may have already earned trademark rights in that word, phrase, slogan, or logo.

So, consider registering your mark/identifier as a federal trademark. There are many benefits to federally registering your mark: Such registration provides: 1) constructive notice of your rights in the trademark across the entire U.S.; 2) strong evidence of the existence of valid rights in your mark; 3) the right to have your mark litigated in federal court; 4) a basis for registering your mark in foreign countries; and 5) the right to file your trademark with U.S. Customs and Border Enforcement, so that you can stop infringing goods at our borders (see our summer 2009 newsletter for more information on obtaining U.S. Customs protection for your trademarks).

Also, start establishing your web presence as soon as possible, before ICANN’s new policies change everything. Use your mark, slogan, or a description of your goods or services to register a web domain for your business. Popular registration services are at Network Solutions and GoDaddy. This step may be crucial to making claims against cybersquatters infringing on your trademark and web domain in the future.

Once you have a mark registration in place, or if you already have a federally registered trademark, your work doesn’t end there. Verify the currency of your trademark registration with the U.S. Trademark and Patent Office by performing frequent monitoring of your marks. Our firm and most trademark attorneys provide trademark searches as part of their services to catch potentially infringing marks before they are permanently registered.

ICANN’s Proposed Solutions

ICANN has proposed some solutions. First, ICANN could set up a centralized database of trademark registration information (an IP Clearinghouse). ICANN could also allow trademark owners a certain period of time in which they could bring claims against new Top Level Domain owners. Additionally, ICANN may provide a fast, easy-to-use method of disposing of clear claims for cybersquatting and fraud.

ICANN plans to make policies based on comments from the public it serves, the internet users of the world. That feedback is even more important now that ICANN is no longer directly regulated by the U.S. Chamber of Commerce, as it was for the first ten years of its existence. Send your comments to the ICANN e-mail addresses set out on their public comment page for the applicant guidebooks here.

Contact us if you should need further information.