BRAND PROTECTION CRUCIAL IN FACE OF DOMAIN NAME CHANGES
There is a notorious level of trafficking in brand names on the Internet, and a recent announcement by Internet Corporation for Assigned Names and Numbers (ICANN) should have all brand owners on high alert.
As it is, many businesses are unsure of the interplay between their brands, their domain names and registered trade marks. Brand owners neglect this at their peril in view of mooted changes to the domain names registration system.
On 26 June 2008, Dr Paul Twomey, President and CEO of ICANN announced that "The Board today accepted a recommendation from its global stakeholders that it is possible to implement many new names to the Internet, paving the way for an expansion of domain name choice and opportunity". Consequently, the time to address any vulnerabilities in your brand protection strategy is now.
The ICANN proposal is to allow a far broader range of generic top-level domains (gTLDs) to those already in existence. It is only a decade since the introduction of .com, .net and .org in 1998. The range of available gTLDs has since grown to 21, including domains such as .biz, .info, and .asia.
The most remarkable aspect is that new registration rules could allow companies to register their own brands as gTLDs in their own right. This is perhaps a natural development of the existing registration system, and the opportunity exists to overcome branding and trade mark disputes that have been associated especially with the .com domain.
According to Peter Coroneos of the Internet Industry Association in Australia, “Greater branded use [of gTLDs] shouldn’t carry with it any significant dangers, provided that registration policies are clear and wouldn’t undermine any legitimate trade marks”.
This is a fascinating development, but should sound a clear warning to brand owners: Can I protect my brand on the Internet? While the new registration rules are yet to emerge, securing undisputed rights to your brand portfolio is essential preparation.
Preliminary indications from ICANN are that there will be a limited application period where any established entity can submit an application for their brand name. Notably, however, brand names will not be automatically reserved. An objection-based dispute mechanism is almost sure to be implemented, whereby brand owners can present their case against any prospective cyber-squatters.
Unfortunately, brand owners without adequate protection may find themselves locked out of their preferred domain name, and forced to negotiate with competitors or opportunists with more guile or tenacity.
If you require advice on brand protection and how you should prepare your business, please contact COTTERS.
By David Perkins
Partner
COTTERS Patent & Trade Mark Attorneys
14 July 2008