Not So Generic – Intellectual Property Issues Surrounding Generic Top level Domain Names

Last year, the Internet Corporation for Assigned Names and Numbers (known as ICANN) began accepting applications for the registration of new generic top level domains (gTLD for short). Gone are the days of being limited to .com, .org, .co, and the like. Now there is a wide variety up for grabs from .book to .grocery. ICANN has received almost 2,000 applications and about 750 of those are in contention with one or more applications. That means more than one person or company has applied to register the same .whatever (pronounced: dot whatever).

Like other parts of domain name commerce, gTLDs can pose a risk to legitimate business interests of trademark infringement, piracy, and other exploitations of intellectual property that cause brand disparagement. Since applications began, the focus of the gTLD universe has become resolving multiple contending applications and addressing other systemic issues such as cybersquatting and abusive registrations. For multiple applications, ICANN’s guidebook provides that ICANN will ultimately auction off the gTLD to the highest bidder if the contending applications are not otherwise resolved.

This has opened the door for experienced domain industry veterans to come up with new solutions to these emerging issues. Rightofthedot, LLC (“ROTD”), a company conceived by two well-known internet industry pioneers, Michael Berkens and Monte Cahn, has developed a program to privately resolve competing applications amongst those applicants. Unlike ICANN’s last resort auction that has all proceeds going to ICANN, ROTD’s contention resolution process utilizes an auction mechanism to determine which applicant will be permitted to maintain its application with the rest being contractually required to withdraw. ROTD’s determination is binding on those participating applicants pursuant to the agreement governing the process but unlike ICANN’s process, the applicants can determine the fate of the proceeds through the same agreement.

In July 2013, ICANN announced that it would impose new procedures aimed at ensuring new gTLDs are not used to host sites engaged in piracy or intellectual property infringement. The new safeguards will contractually prohibit those who register new gTLDs from abusive use and provide an avenue for complaints and suspension of use.

Despite the efforts of private sector industry figures and ICANN, intellectual property infringement and abuses will continue to be a problem. All businesses should register their trademarks and copyright their websites to increase protection against infringers. Most avoid doing so in fear of the cost; not realizing that trademark and website copyright registration is generally very affordable.