Anarchy Or Revolution? Cybersquatting Under The New gTLD Regime

Author:Mr Alistair Payne

By this time next year, it is very likely that ICANN will have approved at least some of the new generic toplevel domains (gTLDs) for launch. With the ever increasing level of smartphone penetration, the development of mobile e-commerce and the ubiquity of the internet's role in daily life, this new phase of internet development has the potential to change user behaviour forever. Are trademark owners prepared for this unprecedented online revolution?

By 2015 the number of generic top-level domains will be in the process of exploding from the current 22 to somewhere between 1000 and 2000. The large majority of these will be 'open' domain names, meaning that anyone is entitled to apply to register a second-level domain name without pre-conditions, such as membership of an industry, authorisation by a particular organisation or residence in a particular location. Even where the TLD name is 'closed' and subject to specific applicant conditions, such as whether a brand owner has sought its own mark or a region has sought its own TLD name root, the integrity of the domain space will depend upon the way in which the owner enforces its role as gatekeeper. Additionally, the way is now open for internationalised domain names, which very significantly increases the degree of complexity and risk for trademark owners.

In practice, this 'revolution' will result in an explosion of cybersquatting, a huge increase in the number of complaints under alternative dispute resolution policies and also of trademark infringement or anticybersquatting litigation cases, where such claims are possible under national law. This is in spite of the protective mechanisms currently planned by ICANN, including the Trademark Clearinghouse and the new Uniform Rapid Suspension (URS) system, which is essentially a cheap, quick-fire domain name dispute resolution complaint system aimed at the most blatant and straightforward cybersquatting cases.

Such a dramatic expansion in the domain name space is going to leave the way open for numerous variations of a trademark to be registered in a multitude of open TLD name spaces. Not just famous and well-known brand owners, but all brand owners of any size, will need to be alert to this risk in order to minimise the possibility of cybersquatting activity.

Initially, they will need to take advantage of Trademark Clearinghouse services by registering their marks for the service in order to be able to qualify for the proposed 'sunrise' and...

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