Last week the Internet Corporation for Assigned Names and Number (ICANN) announced the latest expansion in available gTLDs (e.g., .com, .net, .gov are all “generic Top-Level Domains”). The internet is now abuzz with articles questioning whether this massive expansion of potential trademark infringement urls spells the end for brand owners as we know it!
It does not.
While it is true that, for example, the owner of the ACME trademark (and owner of the acme.com domain) may now have to worry about potential competitors registering, say, acme.widgets, this isn’t all that problematic for two reasons:
- The gTLD sunrise period gives trademark owners 30 days (as of the start of last week) to petition ICANN for the exclusive rights to any gTLDs that potentially infringe with their registered marks. So Mr. ACME can go ahead and secure the rights to acme.widgets, acme.products, acme.store, and anything else he feels might be used by potential infringers to dilute his products.
- It remains the case that the .com gTLD is still trusted by the vast majority of users as the “official” home for any given brand. As far as internet culture goes, users are just much more likely to go to ACME.com and look for the “store” link than to assume that ACME’s official store would be at acme.store.
The cultural norm in #2 could of course change, but this would be less and less likely in the event that gTLD-alarmists prove correct. Meaning, if these new gTLDs are in fact rampantly used by infringers then internet users are more likely to associate the .com gTLD with the only gTLD that they could trust for any given brand.
LawTechie is a blog focusing on trends in tech and digital media. Areas covered include intellectual property, cyberlaw, venture capital, transactions and litigation as they relate to the emerging sectors. The blog is edited by the firm's partner Tim Bukher with contributions from the firm's experts in their respective areas of law.