New Top Level Domains (TLDs) Create Tension For Trademark Owners

New Top Level Domains (TLDs) Create Tension For Trademark Owners

Internet users are familiar with the current top level domain structure of the World Wide Web. .com, .edu, and .org, amongst others, are all part of the common vocabulary used to navigate the wealth of information available online. Recently, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a plan to add more top level domains. The proposal allows for almost any word or name to become a top-level domain. Although this could be an opportunity for trade-mark owners to become creative with their marketing, most actually see this change as a threat to their brands. That is, they fear that the scope of what they will need to police on the internet will broaden, and correspondingly, the costs associated with policing and defensive registrations will also have to rise. A good summary of the opportunities and threats can be found here.

In response to this reaction, Internet Infrastructure blog CircleID has an interesting post that questions the fear about the new TLDs.

Paul Stahura looked at the statistics concerning if/how trade-mark owners currently register their trade-marks across existing multiple TLDs. Confining himself to just the seven most popular TLDs, (.com, .net, .org, .info, .biz, .us, and .mobi), he found that 194,325 second-level names were registered across these 7 TLDs. Of these, he noted that only 3% of these names are registered to the same registrant, and that around 27% of these are USPTO registered word marks.

More interestingly, Stahura also attempted to determine the number of trade-marks not registered across multiple TLDs. Taking Verizon as an example of a company which protects its trade-marks in domain namespace strongly, Stahura constructed lists of strings which are close typos of the name or actually contain the name of the company. He then used this list to see how many of them are registered across multiple TLDs, and also, how many of them are registered just in the .com space. He found that

only three of what may be misspellings of "Verizon" ("veriz0n", "ver1zon" and "verison") which are registered in .com are also registered across five or more of the other six gTLDs. We also found eight of the strings that contain "verizon" (exactly) are registered in .com and are also registered across five or more of the other six gTLDs. The majority of them were solely registered in .com and not in any other TLD that we examined. (emphasis mine – note, he uses gTLD to refer to generic TLDs, the subset of TLDs containing the 7 more popular TLDs mentioned above)


Using a slightly different methodology, Stahura repeated the exercise for There, he concluded “[t]he vast majority ([roughly] 80%) of Amazon's names are registered solely in .com.”

Admittedly, his ad hoc approach of taking two example companies is not scientific. However, it serves as a good indicator of the extent companies look to different TLD registrations when protecting their trade-marks.

As a result of his analysis, he determines that “the vast majority of trademark holders are not registering their trademarks in all the current gTLDs, let alone all the TLDs. Therefore, we do not expect them, in general, to register their trademarks in new gTLDs.”

It should be noted that ICANN’s proposal does attempt to address trade-mark owner concerns by incorporating stringent requirements for operators of new TLDs. In addition to high fees and a determination of business viability, any potential administrator of a new TLD needs to also be able to get over any third party objections. The objections may be based on (1) the legal rights of others, (2) confusing similarity to an existing TLD, (3) concerns regarding morality and public order, and (4) substantial opposition from a significant portion of the community targeted by the TLD.

Proponents further argue that the debate about the potential negative impact on trade-mark owners has blurred the benefit that new TLDs can offer. That is, it is suggested that grouping domain names around interests (e.g, .golf) or regions (e.g., .toronto) would greatly simplify the organization of information on the web.

Such viewpoints support ICANN’s move. However, the other side has not stayed silent. For example, there have been calls for ICANN to more thoroughly explain the problem they’re trying to solve with the new TLDs.

It will be interesting to see how this whole debate ends up. While trade-mark owners are rightly cautious in approaching any change which may threaten their trade-mark investments, the posts above seem to indicate that the inertia of current TLDs will be quite difficult to displace.  As such, any potential negative impact on existing trade-mark owners does not seem so great.

However, the internet moves quickly, and it may very well be the case that this is the catalyst that sparks a paradigmatic change away from the .com TLD. If that happens, the fears about increased policing costs may very well come true.