News & Information

The Internet Corporation for Assigned Names and Numbers (“ICANN”) continues to move forward with its plan to create new general Top-Level Domains. Although this program can be a great benefit to businesses and consumers, the program also creates substantial threats to trademark owners.

Generic Top Level Domains (gTLDs) appear at the end of Internet addresses (for example, .com and .org), and are used to direct traffic through the Internet. ICANN’s plan, which is currently expected to launch in 2010, will allow private parties to create custom gTLDs of their choice from three to 63 characters long.

Cybersquatters, who have made a business of registering others’ trademarks as domain names, will no doubt take advantage of this process to register others’ trademarks as new gTLDs. ICANN is working toward finalizing a procedure which will enable the owners of trademark rights to demonstrate that a proposed gTLD would infringe their legal rights.

A trademark owner’s failure to control the use of its marks can result in loss of rights and value in those marks. Therefore, trademark owners should closely monitor both the ICANN’s process and third-party use of their trademarks to ensure that their marks are not infringed by new gTLD applicants. Trademark owners should also assess what action they will want to take to protect their brands, such as registering their own marks as domain names or gTLDs, registering their marks with the United States Patent and Trademark Office and combating applications for new gTLDs and registrations of domain names which infringe their marks.

Additional information regarding ICANN’s new gTLD program can be found at http://www.icann.org/en/topics/new-gtld-program.htm.