Earlier this year, the Internet Corporation for Assigned Names and Numbers (“ICANN”) announced that they will be opening up the generic Top Level Domain extensions (the “gTLDs”) to allow for personalized extensions. I could (for a mere US$185,000.00+) now apply for a .brian or even a .privacy. And while the chances of me starting a .brian are very slim, it will be interesting to see how many organizations pay the application fee and create their own .blank extension. Opening up the gTLDs will likely force trademark owners to evaluate their brand strategies and, in doing so, weigh the costs and benefits of buying any or all gTLDs related to their brand.
If you’re a trademark owner and you want to approach your strategy conservatively, then you may want to take a defensive position and register any of the gTLDs that relate to the business in which you’re engaged. The list of commercial gTLDs would include .com, .net., .info, .org, .tel, .biz, .mobi, .tv and any other TLDs that seem to have a commercial application. Additionally, you may want to register and maintain the country code domain names (ccTLDs) in the jurisdictions where your organization offers, or plans to offer, its products or services. Once this is completed, you should then register any known variations of your trademark.
While, in theory, this is a very effective strategy – in practice, this strategy will be more difficult to execute. For example, the owners of Lego currently own 450 domain names within the TLDs. They recently pursued and won a WIPO arbitration decision against a cybersquatter who had registered the domains Justlegos.com, legosonly.com, and onlylegos.com; illustrating that even the most vigilant defensive strategy for the registration of domains names cannot prevent all infringements. As such, any brand strategy should be accompanied by vigorous monitoring and enforcement. The decision about which TLDs to register is a business decision that must weigh the cost of brand enforcement from a defensive position and an offensive position.
