Significant Change to the Internet
After years of deliberation and consultation, ICANN (the non-profit organization that runs the internet) has finally approved plans to increase generic Top Level Domains (“gTLDs”), a decision that will dramatically change the internet.
A gTLD is the last component of a domain name (i.e. ‘dot-com’, ‘dot-net’, ‘dot-org’). Currently, there are 22 gTLDs. With over 1.6 billion internet users, and every indication that this number will increase exponentially , ICANN became concerned that the internet highway would cease to be limitless.
ICANN has opened the floor to the world for each to create their own gTLD and registry to govern it. The new gTLDs can be any configuration (i.e. ‘dot-fashionhouse’, ‘dot-luxurybrand’, ‘dot-city’, ‘dot-beverage’, etc.). Under this regime, the internet will literally become limitless. Thus, we may see ‘dot-PRADA, ‘dot-BMW’, dot-Toronto, or ‘dot-wine’, for example. But it will cost you: $185,000 (US) to be exact. Applications open on January 12, 2012. Applicants must demonstrate that they have a legitimate claim to the gTLD they are buying. Whereas this may be more simple with unique brands (i.e. dot-XEROX), it is complicated for brands that are not as distinctive (i.e. dot-DOVE). In Canada, both Mars Canada Inc. and Unilever Canada Inc. own rights to the trade-mark DOVE. If both brand owners have rights to the trade-mark in Canada, who has the right to “dot-DOVE” throughout the world? This goes to the root of the issue between domain names and trade-marks, which we will see play out in the gold rush for new gTLDs.
Sibling Rivalry: The intersection of Domain Names and Trade-marks
Domain names and trade-mark owners have always had a contentious co-existence. Whereas trade-mark rights are granted on a use basis, domain names are registered on a “first-come, first-serve” basis. Obtaining a trade-mark registration requires rigorous prosecution; the threshold for obtaining a domain name is very low. Trade-mark rights are granted territorially; domain names are global. Identical trade-marks can co-exist in association with sufficiently disparate wares and services; once a domain name is registered, there cannot be any duplicate domain name. The exclusivity of the domain name registration and the “first-come, first-serve” characteristics of the domain name can be a great cause of frustration for trade-mark owners. This frustration will no doubt be compounded with the release of new gTLDs.