Whether the advent of .anything will create a crisis or be a panacea for businesses and brand owners remains to be seen. In theory, the rollout of unlimited generic top-level domains (gTLDs) would allow companies to explore branding or rebranding themselves in fresh, innovative ways. Businesses may be able to take better control of their brands and their digital presence, as companies could use new gTLDs, such as .ipad or .droid, to take customers directly to the particular product pages of their websites. This could also help companies steer Internet traffic to legitimate and authorized pages as the company would control the registration of the “.anything” domain and ensure that all websites and content displayed on the websites are authorized. Another advantage of the new regime is that the inclusion of non-Latin characters in gTLDs would precipitate a huge increase in the number of Internet users around the world. Thus, the ability to reach a much larger audience could prove to be a major shift for businesses with global brands.
However, some critics believe the new program is a disaster waiting to happen. Some are concerned that the expansion of virtually unlimited gTLDs will cause great confusion among average consumers and Internet users. The vast majority of web surfers may not currently discern the differences between the existing 22 generic extensions, let alone distinctions in the future among apple.com, buy.apple, apple.buy and apple.store. Still others predict that the hype of the new program will outlive its actual implementation, if past rollouts of other top-level domains such as .jobs, .museum and .travel, which have largely been underutilized, are any indication.
From a business perspective, brand owners may feel compelled to “own” their own brands by applying for every custom gTLD extension that incorporates their most important house brands. As discussed above, that process can become very expensive very quickly. Trademark owners that feel strongly about owning a new gTLD registry and extension would be well served to judiciously consider, under the advice of IP counsel, only applying for the trademarks that are most critical to their businesses.
However, where a brand owner may be licensing its trademarks for use on other types of goods, owning a custom gTLD may assist in the implementation of a strategy to keep control of the brand, even where multiple manufacturers or licensees are involved. For instance, the owner of the brand Breitling, which makes watches but may also license the brand to others that make sunglasses and other goods under the Breitling brand, could register the gTLD “.breitling” and then license use of the gTLD to its licensees or authorized resellers. It could then inform all consumers that authentic Breitling goods are only available online through the “.breitling” gTLD. Such use would cut down and prevent the sale of counterfeit products on the Internet.
Companies that cannot make a business justification to own and operate their own gTLDs are not without options to protect their brands and trademark rights under the new gTLD system. Rights owners should remain vigilant in monitoring the Internet Corporation for Assigned Names and Numbers’ (ICANN) application process and file formal objections to any gTLD that infringes their rights. ICANN has established four separate grounds for formal objections to gTLD applications, and the most relevant of the four for brand owners is the “legal rights objection.” Under this ground, a trademark owner, one who claims that it has rights in a trademark, can object on the basis that an applied-for gTLD takes advantage of the objector’s reputation or mark, impairs the distinctive character of the objector’s mark or otherwise creates a likelihood of confusion with the objector’s mark. The “legal rights objection” can be based on either registered or common law trademark rights, but ICANN has not yet specifically provided details on how one must prove its trademark rights. The formal objection procedure will be similar in scope and structure to complaints filed under the current Uniform Domain-Name Dispute-Resolution Policy for existing domain name disputes.
Brand owners should continue to watch ICANN’s website for future announcements concerning important application and objection dates.