Playing the Name Game: New Domain Names may Impact IP Rights

The Internet Corporation for Assigned Names and Numbers (ICANN) – the organization responsible for managing the internet – has indicated their intent to sell an unlimited number of new top-level domain (TLD) names in the second quarter of 2009. No longer will companies and individuals be restricted to the common web address endings such as .com, .edu and .biz. For example, it is conceivable that later this year Boyle Fredrickson could register .boylefredrickson as its new domain name.

ICANN says the new domain names will help businesses better identify themselves in cyberspace. However, many believe the expansion of TLDs may cause additional trademark violations. In an attempt to curtail some of the concern over domain squatters, each new TLD application will have to include a proposed “Rights Mechanism Protection.” This is a draft policy setting forth how procedures will be put into place in the proposed new TLD to protect legal rights including trademark rights, human rights, and freedom of expression. Additionally, either ICANN or independent third parties will conduct examinations of the applications for (among other things) string confusion – which gauges similarity to other TLDs. Interested third parties will also have the right to object to new TLD applications. Finally, it is also important to note that new TLD applications are likely to cost at least $50,000 and potentially as high as $200,000.

“The application requirements and high costs of new TLDs will limit most intentional infringements on existing brands and trademarks to a certain degree,” says Boyle Fredrickson Attorney James F. Boyle. “However, ICANN’s decision to open up TLDs could conceivably dilute the strength of certain unprotected trademarks. If these new TLDs become available, it will become very important for owners of distinctive names to monitor for the creation of any new domain names that interfere with their existing intellectual property and address any uncovered concerns.”