The phenomenal success of the Internet has lead to increasing pressures upon the domain naming system, and even rumours that the Internet was in danger of running out of addresses.
ICANN major announcement – gates opened on Top Level Domains
On 26 June 2008 the Internet Corporation for Assigned Names and Numbers ('ICANN') – the body which manages the domain name system – concluded its 32nd, and arguably most momentous, International Public Meeting with a decision to approve proposals to relax its rules on what can be accredited as a Top Level Domain name ('TLD') and to allow for the registration of TLDs in non-Latin scripts.
The potential effect is enormous. At present ICANN accredits domain name registrars for only twenty one 'generic' TLDs (such as .com, .net, .biz) plus numerous county codes (such as .uk, .nz, .tv) but it will soon be possible for applicants to register any string of letters as a TLD provided they are in a position to demonstrate that they have a "business plan and technical capacity" and can meet the costs, expected to be "be in the low six figure dollar amounts".
New Opportunities for Brand Owners and Businesses
The changes are likely to be of great interest to major brand owners and it is also believed that there will be significant interest in the establishment of city-based TLDs – such as .ldn (London), .nyc (New York City), .paris, and .berlin – and TLDs with specific association to special interest groups; such as .xxx for the adult entertainment industry.
It is currently estimated that although something in the region of 70% of all websites are presented in English, only about one third of Internet users are native English speakers. It is therefore also envisaged that there will be significant activity in relation to the registration of so-called 'internationalised' domain names written in scripts deriving from, amongst others, Arabic, Asian and Cyrillic alphabets, with the proposed changes making it possible for the entirety of a domain name (inclusive of the .com, .net, .biz or whatever, element) to be depicted in non-Latin / Roman characters.
Possible issues
As well as legitimate opportunities for brand owners and businesses, the changes may also provide cyber-squatters with a whole new dimension in which to operate. With unlimited domain names available it seems inevitable that it will become less practical to keep track of and register all variants of a brand and enforcement may therefore become more problematic.
The new procedures will not, however, be implemented until finalised versions of the proposals have been approved by the Board of ICANN. This is expected to take place during the first quarter of 2009, with ICANN hoping to start accepting domain name applications sometime during mid 2009.
At present the finer points of the proposed new system remain unresolved, leading to speculation that generic TLDs of potentially broad appeal (such as, for example, .news and .sport) will become the subject of dispute. Matters have not been assisted by ICANN's Dr Twomey advising that, in such circumstances, his organisation "will try and get the parties together to work [things] out, but if that fails there will be an auction and the domain will go to the highest bidder".
Advice
However matters are resolved, it is anticipated that in disputes involving registered trade marks, brand owners will be able to pursue objection proceedings against invalid / non-legitimate attempts to register domain names incorporating their mark(s). It may well therefore become important to have local trade mark registrations, particularly as new global markets emerge and in order to minimise possible problems arising from the existence of internationalised TLDs.
A review of existing trade mark portfolios and proposed new brands is therefore recommended, as is (certainly for larger brand owners) early formulation of a strategy for combating the possible new TLDs.
Mathys & Squire LLP offers trade mark audits specifically aimed at providing a cost-effective domain name and trade mark registration strategy. The process is tailored to your business needs and budget, and will put you are in a position to take advantage of and not be caught out by the forthcoming developments. We can also provide advice on dispute resolution and put in place trade mark monitoring services, and in some cases we even may be prepared to conduct initial reviews without charge, in order to provide an indication of what action, if any, is commercially advisable.
Robert J. Hawley is based in our Manchester Office, click on "View Firm's Website" below for all our Company details.
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