• New Generic Top Level Domain Names Raise Concern
  • January 30, 2009 | Author: Ruth Mae Finch
  • Law Firms: Dickinson Wright PLLC - Washington Office ; Dickinson Wright PLLC - Bloomfield Hills Office
  • The Internet Corporation for Assigned Names and Numbers (ICANN) is set to issue new generic top level domains. Top-level domains - the suffixes like ".com" that appear at the end of Web-site names - have been a source of irritation for many trademark owners when third parties use domain names that incorporate their marks. The new generic top level domain names have generated concern from The Wall Street Journal. There are at least two aspects of this new issuance that trademark owners should consider. The first involves the purchase of new generic registries such as .Marriott or .Ford. The second involves the purchase of domain names within generic suffixes such as .hotel or .auto.

    The introduction of generic registries such as .Marriott or .Ford is more likely to provide opportunity rather than concern. The cost of a new top-level domain registry is $185,000 which clearly reduces the chances of cyber squatters purchasing many trademarked generic registries. The main concern would be the lost opportunity for trademark owners who share the use of their marks with others in different fields of use. This could create a situation wherein the generic top-level domain registry could be snatched up by someone in an unrelated industry. Since the new owners may own rights in the mark in their unrelated industry, procedural challenges to object to the registry would be difficult. The main advantage of purchasing such a generic top-level domain registry is the control given to the registry owner. Hotel companies could require all franchise owners to maintain their website within the registry. This would allow consumers to search for rooms, vacations, rental cars, etc. over thousands of web sites all strictly within a .Marriott domain.

    The real concern put forth by industry analysts appears to stem from the domain name problems that took place early in the ".com" history. Although ICANN set forth procedures to allow trademark owners to shut down those who utilized their marks in domain names such as Marriott.com or Ford.com, the procedures were not without considerable time and expense. In fact, making preemptive filings for these domains was often more cost-efficient than challenging opportunistic third parties. The Wall Street Journal appears to be concerned that the history of ".com" domains will be replayed by new generic domains such as .hotel, .bank or .auto. They appear concerned that in the present economy, trademark owners will not be able to acquire domains in every new registry. The reality of such a historic replay remains in question. Consumers seem to have traditionally shunned the domain suffixes outside the ".com" realm and may do the same here.

    Trademark owners should consult with their attorneys to determine the most appropriate strategy for their individual circumstances. For most owners, it will not be possible financially to purchase a generic registry. Registering domains using their marks in new generic registries such as .hotel or .auto should be done on a case-by-case basis. Registering Marriott.hotel may be a wise move for the hotel chain while Marriott.insurance may not be. Unfortunately there is not a universal answer to the issues created by these new generic top-level domains. The answer for most corporations or trademark owners can only be determined after meeting with their intellectual property attorneys and analyzing the potential market effects of a failure to act. Such steps are highly encouraged.