Business Workshop: New domains are trademark headaches

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The organization that controls Internet names is making it harder and more expensive for trademark owners to protect their brands online.

The Internet Corporation for Assigned Names and Numbers (ICANN) recently began to release new generic top-level domains (gTLD). These are are the endings of Web addresses, such as .com, .org or .net. Until 2013, there were only 22 of them.

ICANN has already introduced more than 175 new generic top-level domains and hundreds more are in progress. Examples include .clothing, .fitness and .finance.

Once a new generic top-level domain is introduced, companies can register their desired website names, known as second-level domains, to it. Many companies find, however, that second-level domains related to their trademarks have already been taken by “cybersquatters,” which are third parties that snap up domain names related to popular companies or brands. To defend their trademark, companies must pay off the cybersquatters, file a lawsuit or initiate a domain name dispute with ICANN.

Companies that don’t defend their trademarks risk losing the ability to protect them. Even if a company has no intention of using a domain name related to its brand name, allowing someone else to own and use the domain name could cost the company its trademark protection.

Businesses should register second-level domain names related to their trademarks with the Trademark Clearinghouse during the “sunrise period,”which is a 30 to 60 day window before a new generic top-level domain is introduced to the public.

Once the generic top-level domains is launched, the Trademark Clearinghouse sends notifications about attempts to register domain names related to trademarks. Many businesses also use domain name watch and blocking services for additional protection.

The new generic top-level domains provide a host of new possibilities for trademark infringement. Trademark owners should keep a close watch on news from ICANN and the announcement of new generic top-level domains.

— David Oberdick, Meyer, Unkovic & Scott; dgo@muslaw.com

Business workshop is a weekly feature from local experts offering tidbits on matters affecting business. To contribute, contact Business Editor Brian Hyslop at bhyslop@post-gazette.com.


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