Ray Marshall

Domain names, domain names everywhere

Ray Marshall

3 October 2014

IT Trade marks

It is rapidly approaching one year since ICANN (the Internet Corporation for Assigned Names and Numbers), the entity which controls the domain name system, started to release new generic top-level domains (commonly referred to as extensions) for registry operators to offer. Instead of being limited to traditional and familiar extensions such as .com, .net and .org, domain names may now be registered based on subject matter (.dating, .tax, .lawyer), geography (.melbourne, .london, .nyc), by brand name (.apple, .microsoft, .amazon), or nearly anything else one could think of.

To date, 411 new extensions have been approved, including 32 domains in non-latin letters (e.g. using Arabic or Cyrillic letters or Asian language characters). However, this still leaves nearly a thousand potential domain names on the table to be released over coming months based on the number of applications lodged in 2012.


These new extensions represent opportunities for companies to rebrand and market themselves to a limited extent, with shorter, more relevant and more memorable internet addresses.




Unfortunately for trade mark owners, registration of trade marks and brand names by cybersquatters is rife in the new extensions. IBM may have been the first company to have had to jump on a cybersquatter, who had registered the domain names ibm.guru and ibm.ventures.


From a trade mark protection perspective, companies now must ensure that they are protected across a wide and growing field, both specifically (e.g. extensions specifically related to the brand) and more generically (e.g. .website, .company, .reviews and other non-specific extensions). The unwary could easily be tarnished due to malicious or deliberate registrations against which there may not be any remedies (if .sucks is approved, expect an avalanche of US-based cybersquatters registering trade marks and claiming “freedom of speech” first amendment rights).


Competition for extensions which are directly part of a company’s name is also likely to be high given the global nature of the internet (e.g. two companies may be called “ABC Developments”, one registering abcdevelopments.com and the other abc.developments) – this kind of registration could be both innocent (another person with legitimate interest in the similar domain name) or malicious (someone seeking to mislead customers). Any company dealing with sensitive, confidential or financial information should ensure that it is well across any potential misuse in this way.




ICANN has established a Uniform Rapid Suspension System (URS) applicable to the new extensions which is intended to be a faster, cheaper (US$375+) and easier method of dealing with “clear-cut cases of infringement”. However, a successful URS outcome only means that the domain name in dispute is suspended for the duration of its registration – the complainant does not have any rights to recover the domain name until the registration expires. It is also unclear to what extent a case may be “clear-cut” – if a respondent has any evidence at all to indicate a legitimate use, this may be sufficient for the dispute to be unsuccessful.


The Uniform Dispute Resolution Policy (and its extension-specific variants) remains available for complainants to recover infringing domain names – but with arbitration fees of $1500+, plus legal expenses, the costs quickly mount up.


Domain name registrars offer “sunrise period” registrations, allowing trade mark owners to register relevant domain names prior to the extension being made open to registrations by the general public. Registration fees during sunrise periods vary.


ICANN’s Trademark Clearinghouse records global trade mark information for tracking claims and sunrise periods. Trade marks can be added to the Clearinghouse for $150/year. However, entry in the Clearinghouse only serves to give you priority during sunrise periods and alert you if a relevant domain name is registered – it does not prevent others from registering available domain names using your trade mark.


Finally, some registrars offer protection services across all the extensions that they administrate. For example, Donuts Inc. anticipates being awarded 200 different extensions and, for a US$2,995 fee, will offer a “Donuts Protected Marks List” enabling trade mark owners to block their trade mark from being registered across any of these extensions for five years. However, this will not prevent registration of relevant domain names by others with equal rights (e.g. a foreign trade mark) during the sunrise period, registration of typo domain names, and other restrictions.


As may be clear, none of these options provide a one-size-fits-all solution, and the combined cost of protection may be daunting for trade mark owners with significant portfolios. In practice, the multitude of circumstances and the number of new and up-and-coming extensions make it impractical to fight every potential battle. The end result is that the only realistic method of trade mark protection, just as it has always been, is constant vigilance.