Brand Protection on the Internet

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Category: Intellectual Property Law, Public
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Professor Boyden’s Internet Law class and a legal internship, where many of my responsibilities dealt with online trademark protection of my employer’s brand name, opened my eyes to the complicated nature of brand protection on the internet.

As the internet, and internet crime, develops, trademark owners must confront the abuse of their marks as domain names in two particular ways. First, cybersquatting is registration of a domain name that contains a trademarked term with the intention of selling the domain name to the owner of the trademark at a bloated price. 15 U.S.C. § 1125(d) (2006). Second, typosquatting is the registration of a domain name that includes an intentionally misspelled famous trademark. Typosquatting creates revenue for the squatter by capitalizing on the recognition of the mark through the placement of advertisements on the page, so that a fraction of a cent is generated by each page view from visitors attempting to reach the mark’s owner’s legitimate page. Shields v. Zuccarini, 254 F.3d 476, 483 (3d Cir. 2001).

Over the past year, a debate progressed regarding whether a third domain-name-centered manner of trademark infringement is possible. In January 2012, the Internet Corporation for Assigned Names and Numbers (“ICANN”), the corporate entity that governs domain name registration and usage around the world, opened applications for new “generic Top Level Domain Names” (“gTLDs”), creating an essentially unlimited number of domain names that may be registered in the future. Instead of the standard Top Level Domain Names like “.com,” “.org,” “.gov,” “.net,” or country-coded domain names (for example, the United Kingdom’s “.co.uk,” Canada’s “.ca,” or New Zealand’s “.nz”), ICANN opened possible domain name endings to include any word that a party is interested in registering. ICANN received 1900 applications for new domain name endings before the application window closed on May 30, 2012.

Applicants are vying for the right to administer the secondary domain names that come after the “www.” and before the “.whatever” in a domain name. Certain gTLDs resulted in bids from multiple applicants. These generally include common words and phrases like “.tech,” “.beauty,” “.blog,” “.coupon,” “.hotel,” “.inc,” “.mail,” “.news,” “.sucks,” “.restaurant,” and “.vip.” Because a $185,000 fee must accompany each application, registration applications for gTLDs that incorporate brand names were almost always restricted to parties with a claim to the brand. Examples of these applications include “.hermes,” “.kindle,” “.lamborghini,” “.lexus,” “.microsoft,” “.oldnavy,” “.qvc,” “.scjohnson,” and “.swatch.” The full list of applied-for domain names is available at http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en.

Now that the list of potential registrations is online, a seven-month period for objections and comments is open. ICANN hopes to elicit challenges by parties that did or did not submit an application about potential damages inflicted if a bid for a specific gTLD is accepted. Most potential complaints and objections will likely be based on intellectual property grounds.

Potential challenges to applications include several scenarios. First, it is possible that a trademark owner did not apply for a gTLD based on the mark he owns, but that someone else did apply for a related gTLD. The solution is simple: when ICANN’s gTLD process concludes, mark owners will have the first opportunity to register secondary domain names associated with the gTLDs. For example, hypothetically, if Hilton is awarded the “.hotel” gTLD, Ramada, Holiday Inn, and other hotel chains would likely have priority in establishing ramada.hotel, holidayinn.hotel, and so on).

The most severe concern from internet law scholars and observers when the gTLD process was announced was that typosquatting and cybersquatting would be extended to the gTLDs. Because the cost of applying for a gTLD was so high, however, only those with legitimate claims to the names seem to have applied to secure a gTLD. Yet, a second challenge may emerge after the initial gTLDs have been awarded: cybersquatting on the secondary domain names. For example, it would be easy for a squatter to register a misspelled trademark on a variety of different gTLDs, even if the gTLDs have nothing to do with the trademark. Further, this type of squatting would be very difficult for trademark owners to police. It is likely, though, that if these instances of advanced squatting are found, an appropriate resolution can be achieved through the current Uniform Domain Name Dispute Resolution Policy, an arbitration-based ICANN initiative that has generally proven to be successful in awarding squatted domain names to trademarks’ owners.

A third scenario may invoke a challenge to an application when more than one applicant applied for the same gTLD, and more than one of those applicants have legitimate claims to the mark. An often-cited example of this type of challenge is “.delta.” Delta Airlines submitted an application, and if Delta Faucets had also submitted an application, one of the companies would need to show that the acceptance of the other’s gTLD application would harm its brand.

If a party did not contemplate potential intellectual property effects of this new gTLD system before the application window closed, the crucial time to protect trademarks is right now, during the comment period. However, it is unclear how ICANN will determine claims of harm to particular brands, or how it will navigate a dispute between two distinct parties who both have a legitimate claim to the same gTLD.

Ultimately, new gTLDs will be posted in March 2013 in groups of 500, according to ICANN.

[Editor’s update: Ariane Strombom, a 2013 graduate of the Law School, is now an attorney at Whyte Hirschboeck Dudek S.C.]

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