Prepare For Trademark Infringement With New Top-Level Domains

Generic top-level domains (gTLDs) include .com, .net, .org, .edu, and other variations in what is considered to be the back-end of a domain name.  In 2000, the Internet Corporation for Assigned Names and Numbers (ICANN) introduced .aero, .biz, .coop, .inof, .museum, .name, and .pro.  Then, in 2005, .cat, .jobs, .mobi, .tel, and .travel were added to the list of available gTLDs.    Further, there is now the option to create a country code top-level domain (ccTLD).  For the United States, the ccTLD is .us.

Starting in 2012, there will be many new TLDs, and they will be far from generic and have absolutely nothing to do with any particular country.  Basically, any person or company will be entitled to apply for its own TLD.  The variations are limitless, but the most valuable TLDs will be the more generic ones.  Think about it this way – Grey Goose could buy .greygoose, but what if they won the right to .vodka?  These TLDs will come at a hefty price, though.  As Mashable.com reports, the application fee is $185,000 and the annual fee is $25,000.

What I find to be the most pressing concern is the future legal battles that will result from the grabbing of others protected trademarks.  Cybersquatting on another’s TLD could open up the door to a Uniform Domain Name Dispute Resolution Policy (UDRP) action and/or Anti-Cybersquatting Consumer Protection Act (ACPA) action.  The UDRP method is offered around the world and allows for the cancelling or transfer of an infringing domain.  ACPA is restricted to the United States and allows for the trademark owner to also recover damages and attorney’s fees.

If you are an individual/company looking to purchase one of the new TLDs, you should first consult an attorney, who will be able to help you through the process of applying for the TLD(s) you are interested in owning and run a trademark search to see if you have a strong chance of being protected from future litigation based on potential trademark infringement.

If you are an individual/company who believes that your trademark is being infringed upon, you should consult an attorney to see if you should engage in litigation.  The attorney will be able to advise you as to whether you should file a UDRP or ACPA action and will handle the drafting of necessary documents along with the actual litigating of your claim.

Contact us for more information.