NEW DOMAIN NAMES BRING NEW CHALLENGES TO PROTECTING YOUR BRAND

On Wednesday, June 13, 2012 ICANN, the Internet Corporation for Assigned Names and Numbers published the full list of submissions for new generic top level domains. The owners of these domains will no longer be limited to .net, .com, .org, .edu, .xxx, .us (if located in the U.S.) or .ca (if located in Canada) or .co.uk (if located in the United Kingdom.) and the like. See http://m.bbc.co.uk/news/technology-18428324

For owners of trademarks these new domains raise numerous problems. While U.S. trademark law prohibits the registration of generic terms and Canadian trademark law prohibits the registration of clearly descriptive terms, applications have been made for such new generic top level domains as .ADULT, .CANCERRESEARCH (applied for by the Australian Cancer Research Foundation), .CAREER, .CREDITUNION, .FINANCIAL, .GAME (applied for by Google and Amazon as well as three other entities), .GROCERY (applied for by both Safeway and Wal-Mart), .HEALTHCARE, .HOSPITAL, .INSURANCE (applied for by Progressive and three other entities), .KOSHER, .LOAN, .MAKEUP (applied for by L’Oreal), .MORTGAGE, .MAIL (applied for by Amazon, Google and five other entities), .PIZZA, .PORN, .RESTAURANT, .SEX (applied for by two different entities), .UNIVERSITY and .YELLOW PAGES.

[Note that numerous applications were made for new domains that would not be problematic, e.g., Xerox applied for .XEROX, Comcast applied for .XFINITY, Microsoft applied for .XBOX, the Weather Channel applied for .WEATHERCHANNEL, Sony applied for .SONY, Nokia and Nissan applied for .NOKIA and .NISSAN respectively, and Ford Motor Company applied for .FORD.]

Where more than one party applied for the same domain, the parties involved are encouraged to resolve their conflict voluntarily resulting in the withdrawal of one or more applications or, if not resolved, an auction will result.

Here are some examples of some problems that could result:

When the .XXX domain was created for adult sites last year, operators of adult businesses had the opportunity to identify themselves as adult businesses by using that domain suffix. At the same time, non-adult businesses could park .XXX domains and thereby make them unavailable for use by adult businesses thereby preventing what might be an unsavory association, e.g., GOOGLE.XXX. Now both owners of adult websites and owners of non-adult websites that wish to avoid such associations will have to deal with .ADULT and .PORN as well.

If you operate a university hospital, do you register a .COM, .EDU, .CANCER RESEARCH (if the Australians will let you use it), .MEDICAL, .HOSPITAL, or .HEALTHCARE domain name and if you own a trademark for your hospital you now run the risk of an infringer affixing that mark or a confusingly similar mark not only to a .COM suffix but to any one of the new suffixes listed above.

What if you’re Estee Lauder? L’Oreal just acquired the MAKEUP domain and from a marketing standpoint they can now use that domain to build an online brochure for their product line, e.g., mascara.makeup, lipstick.makeup, foundation.makeup, etc., thereby attaching to their domain name the generic names of numerous types of cosmetics in their catalog. Will doing so give them an unfair advantage with a search engine? Have they in fact obtained a right that they couldn’t have obtained under trademark law; the exclusive right to use the generic name for their products? Or what if you’re the U.S. Postal Service? Google, Amazon and five other applicants have applied for the MAIL domain.

KOSHER presents another problem. Products that are “Kosher” are supposed to be certified as such by a Jewish rabbinical certifying authority. Is the owner of the KOSHER domain one of those authorities? If not, is adding that domain to a product name a de facto certification. If the owner of that domain is one of those authorities; that gives that authority higher authority than competing authorities (There are a number of certifying groups in the U.S.) as only that authority owns the KOSHER domain. [Note HALAL presents less of a problem as HALAL was registered as a “community” domain. KOSHER was not. A community-based generic top level domain is operated for the benefit of a clearly delineated community and the applicant for such a domain “is asked in its application to substantiate its status as representative of the community it names in the application by submission of written endorsements in support of the application” Thus, it could be assumed that (although I could be incorrect) the Muslim community has vouched for the legitimacy of the usage of HALAL as a domain.]

There are grammatical issues as well. Does Ray’s Pizza register its domain name as Ray’s Pizza.PIZZA or Tony’s Pizza register its domain name as Tony’s Pizza.PIZZA and what happens if they promote that domain in their advertising? Little Caesar’s owns federal registrations for PIZZA!PIZZA! for pizza and restaurant services.

And there are cost issues. Suppose, for example, you operate “The Community Credit Union” and already own either a .COM or a .NET domain name. Do you now acquire a .CREDITUNION domain name, a .CREDITCARD domain name if you offer credit cards to your customers, a .FINANCIAL domain name, a .INSURANCE domain name if you offer insurance services to your customers, assuming you could acquire such a domain name as Progressive is one of four applicants for that domain name, a .LOAN domain name, a .LOANS domain name, and a .MORTGAGE domain name. Owning and maintaining those new domain names is not only an additional cost but, most significantly, trademark protection and clearance will now become more expensive as it will be possible to not only infringe one’s trademark by taking it or a term that looks or sounds alike and adding .COM to it but now it will be possible to infringe one’s trademark by taking it or a term that looks or sounds alike and adding any one of a number of these new generic top level domains to it. Also, clearing a trademark for potential use just became a more complicated process as while formerly one would search for confusingly similar marks and domain names with a .NET, .COM, and in some cases a .ORG suffix as well as the country suffixes where that trademark would be used, e.g., .US in the United States, .CA in Canada and .CO.UK in Great Britain, now clearing a trademark will also involve searching any one of a number of relevant and irrelevant suffixes noted above. For example, what might be an innocuous mark in the fashion industry might carry a not so innocent connotation in the adult entertainment industry and so the “adult” suffixes noted above would need to be searched together with the usual .COM, etc. suffixes.

It is for this reason that the BBC article identified at the top of this post noted Coca-Cola and Kellogg’s, not exactly novices in the field of branding and trademarks, not only abstained from registering any new generic top level domains but signed a petition in protest.

So what can a trademark owner do at this point; not much.

(1)          You can file a “Legal Rights Objection” if your registered or unregistered trademark is infringed by the applied-for generic top level domain. However, that is unlikely to occur as such domains as .CREDIT UNION, .HEALTHCARE, .MAKEUP, .INSURANCE AND .PIZZA are generic and no one is likely to own either an identical or confusingly similar trademark, except maybe Little Caesar’s.

(2)          You can file a “Limited Public Interest Objection.” However, such an objection must fall within a defined category and must be “contrary to general principles of international law for morality and public order.”  Those principles might be found in such instruments as the “Universal Declaration of Human Rights,” the “Convention on the Elimination of All Forms of Discrimination Against Women,” the “Convention Against Torture And Other Cruel, Inhuman, Or Degrading Treatment or Punishment,” the “Slavery Convention” the “Convention on the Prevention and Punishment of the Crime of Genocide,” and the “Convention on the Rights of the Child.” Also prohibited under this objection are generic top level domains that incite or promote violent lawless action, incite or promote discrimination based upon, race, color, gender, ethnicity, religion or national origin, and that incite or promote child pornography or other sexual abuse of children.

(3)          Finally, without going into detail, members of a community can object to a community-based generic top level domain if there is substantial opposition from a significant portion of the community to which the string is targeted.

So, the next time you’re in the grocery aisle and see “Tony The Tiger®” or “Snap Crackle Pop®” you can think of them as scholars of trademark law who foresaw the mess (Maybe not for lawyers!) that the Internet Corporation for Assigned Names and Numbers created in the year 2012.

 

About ERIC WACHSPRESS

The material on this website is for informational purposes only. It should not be considered legal advice and is not intended to create an attorney-client relationship. If you have questions regarding any material presented herein, we recommend that you consult an attorney. This web site and information presented herein were designed in accordance with Illinois law. Any content in conflict with the laws or ethical code of attorney conduct of any other jurisdiction is unintentional and void. I am a Chicago attorney practicing in the areas of trademark, copyright and information technology law as well as general corporate law. Formerly a trademark examining attorney with the United States Patent and Trademark Office, I have been in private practice since 1987 representing clients in a wide variety of industries, including the consumer products, financial services, information technology and entertainment industries. You can contact me at markscounsel@gmail.com, by phone at 773.934.5855 or by mail at 417 S. Jefferson St., #304, Chicago, IL 60607 USA
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