Domain Name Expansion – ICANN

The sudden availability of domain names provides an opportunity for businesses to choose a domain name which will be linked directly to their brand – www.Mc.Donalds for example, would be the complete domain name address – with no need for the currently used suffixes of .com, .org for example. The entire domain name could consist of your brand name. In most web browsers, the WWW. prefix can also be dropped by a user.

The disadvantage of this is that there is widespread potential for abusive registrations on a vast scale. Opportunistic registrants have had to be particularly sharp to take advantage of domain name registrations in recent years – some of the most valuable domain names using the ‘traditional’ TLDs, such as .com have almost all been taken and are usually taken by domain drop catchers for resale to the highest bidder at auction.

Of greatest concern to commercial clients with key brand names will be what protection will be afforded to protect their trade marks? The ICAAN press release has an increasingly familiar approach to such matters:

“Trademarks will not be automatically reserved. But there will be an objection-based mechanism for trademark owners where their arguments for protection will be considered.” See here

So the onus is on the trade mark owner to be proactive in enforcing protection of their trade mark rights. How this will work in practice will remain to be seen. The trade mark owner will have to spend considerable resources in enforcing their rights and preventing others from registering domain names similar to their own. Whilst the dispute resolution service can offer protection from the more blatantly abusive registrations, there is grave potential for some trade mark owners to suffer dilution of their brand name if they are unable to prevent a particular domain name registration.

The changes will now allow for other language scripts. Currently domain names are limited to 37 roman characters, now there is the opportunity to expand brands internationally to allow consumers in one particular country to be directed to an instantly recognisable domain name in the local language script. The concern for trade mark owners will be that this will allow for transliterations of roman characters into many other languages. The ability of trade mark owners to identify such registrations could take considerable time and effort, long after any damage to the brand’s identity has been suffered.

Whilst ICANN’s expansion presents a number of opportunities for brand expansion and promotion, it clearly adds to a trade mark owner’s burden of maintenance to defend their key brand names.