Thursday, April 4, 2013

New Best Practices for Trademark Owners in an Era of Ever Increasing gTLDs

As new domains become available, trademark owners with an internet presence should consider adopting new best practices to protect their marks.  By way of background, a generic top level domain (“gTLD”) is the alpha numeric string that appears after the “dot” in a web site URL.  The most ubiquitous such creature is the well-known “.com.” In the 1980s, the Internet Corporation for Assigned Names and Numbers (ICANN)–the mysterious not-for-profit corporation under contract with the US Department of Commerce to see to the proper functioning of the Internet’s system of addresses–created seven gTLDs: .com, .edu, .gov, .int, .mil, .net, and .org.. In years following the creation of the original gTLDs, discussions concerning additional gTLDs led to the selection in November 2000 of seven new gTLDs for introduction: .biz, .info, .name, .pro, .aero, .coop, and .museum. In 2003, ICANN initiated a process that resulted in the introduction of six new gTLDs (.asia, .cat, .jobs, .mobi, .tel and .travel).  Most recently, .xxx has been added to the mix.

At each step along the way, the introduction of new gTLDs created anxiety for trademark owners concerned that each new gTLD opened up opportunities for domain name brokers to hijack or cybersquat on second level domains consisting of valuable trademarks.  For instance, might find that there are cybersquatters hosting sites at or  In response to these concerns, at each launch of a new set of gTLDs, ICANN implemented a so-called “sunrise” period, enabling trademark owners to get first dibs on any new domain name consisting of a trademark owner’s trademark.

During the late 1990’s and early 2000’s, this led to a “best practices” regime of domain name management  that consisted primarily of trademark owners registering thousands of domain names consisting of their trademarks in an effort to prevent others from doing so. 

Given developments in the gTLD area in the last two years, however, this approach is no longer workable.
In late 2013, ICANN is set to launch, at last count, 1,930 additional gTLDs.   The process will include an enhanced version of the sunrise period, permitting trademark owners to register their trademarks in a clearing house system.  Even so, the costs associated with registering even a single trademark in each new gTLD will geometrically multiply the domain name portfolio budgets of many brands.

So what is a diligent trademark owner to do?  How about nothing?  With the caveat that this suggestion is likely to be viewed as heretical among my fellow IP/Internet law attorneys, it is a notion that bears some consideration.  At the beginning of the Internet era, the  business community lacked insight into the manner in which users would come to navigate the web.  In addition, few could have anticipated the sophistication that has now been achieved by search engines in matching user queries with relevant search results.

As a result of emerging user patterns, for example, virtually no user navigates to a website by entering the URL in the location bar of a browser, even if the user knows the URL.  Rather, the user enters the common name for the brand or other item in the search box of a search engine.  In turn, search engines ruthlessly index web sites based on relevance criteria that make it virtually impossible for a user seeking the Acme web site, for example, to be directed anyplace else. The massive proliferation of gTLDs will only accelerate the emphasis on this relevance analysis. Accordingly, it seems likely that the increasing proliferation of gTLDs will actually make it less important, not more, for brand owners to lock up every possible variation of their marks in connection with every gTLD.  If so, brand owners may derive an unexpected benefit from the additional gTLDs in the form of smaller domain name registration budgets—not larger.

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