Managing the risks of additional domains

Following the decision to increase the number of generic “top-level domains” that are available globally (such as .com, .net and .org), the Internet Corporation for Assigned Names and Numbers (ICANN) has received 1930 applications. Consequently, when the domains that pass the evaluation process go live next year, familiar address endings could be joined by .bbc, .bank, .cloud or even .fashion.

However, this is set to cause an intellectual property headache. With a number of relevant domains likely to be available, businesses will need to identify all those that are pertinent to their firm and ensure they have the rights to them in order to stop others profiting from their brand and reputation.

Furthermore, there is an increased risk of cybersquatters purchasing these first, with the aim of selling them to businesses at an inflated price.

ICANN has stated that the evaluation process and other safeguards should protect against such issues. During the evaluation process, ICANN will check whether each application is so similar to others that it would cause user confusion, and applicants must show how they would tackle “activities that affect the legal rights of others”.

While businesses will have around seven months to object to any of the proposed domains, ICANN is also setting up a trademark clearinghouse as a further protection measure. The clearinghouse will accept and authenticate rights information. Brands can add their registered trade marks to this database, enabling the trade mark owners to purchase addresses using a combination of their brand and an appropriate new domain, such as “Volvo.car”, before these are available to the general public.

Additionally, anyone looking to register a domain will be told if this is a trade mark, and the owners will be warned that another person is attempting to register a domain that potentially infringes their trade mark.

For more information on this or any other intellectual property matter, please contact us.