Nearly every business must have an online presence today, not only to attract new customers, but to communicate and interact with them. A website is the core of any business’s online strategy. Even with presences on social media sites, consumers expect to find a website. It is therefore vitally important for businesses to protect their brand from online infringement. Use of a business’s name, or a similar-sounding name, in an Internet domain name, known as “cyber-squatting,” is a common form of trademark infringement. Fortunately, processes exist that allow businesses to obtain rights to a domain name from cyber-squatters.
A basic address on the world-wide web typically consists of a “domain name” with an extension known as a “generic top-level domain” (gTLD), such as .com, .net, or .org. Until now, disputes over domain names have involved the domain name itself, but a recent decision to expand the number of available gTLDs will open up a new realm of possible cybersquatting.
The Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization that oversees the global network of domain names and IP addresses, authorizes “registrars” to register domain names to businesses and individuals. The process of registering a domain name is quite simple, requiring a few minutes and as little as $10. ICANN accepted applications for new gTLDs for a six-month period earlier this year, eventually receiving more than two thousand. The gTLD application process, however, is far more complicated than domain name registration, and requires a $185,000 fee per gTLD. While cyber-squatting is most likely to occur in the domain name itself, businesses may encounter cyber-squatting both before the “.com” in a domain name and in place of the “.com.”
To help trademark owners fight cyber-squatting, ICANN developed the Uniform Domain Name Dispute Resolution Policy (UDRP). Anyone registering a domain name through an authorized web registrar must agree to be bound by the UDRP. An alleged victim of cyber-squatting may file a complaint under the UDRP and submit the matter to an approved dispute resolution organization. The organization has the authority to award the name to the complainant if it concludes that the domain name is identical or confusingly similar to the complainant’s name or trademark, and that the registration was done in bad faith. Apple, Inc. recently won the rights to “aplestore.com” through the UDRP arbitration process, arguing substantial similarity to its own domain name. The UDRP will also apply to new gTLDs.
Since the UDRP typically deals with disputes over names that are already live on the Internet, ICANN established procedures to specifically address gTLD cyber-squatting. It will maintain a Trademark Clearinghouse, where trademark owners can submit information about their marks for review by gTLD applicants. ICANN also created a procedure for a trademark owner to submit a Legal Rights Objection while a proposed gTLD is still under review. This allows a trademark owner to show cause why a proposed gTLD should not be granted.
The New York business attorneys at Samuel C. Berger, PC offer fixed-fee packages of legal services to businesses and entrepreneurs who want to do business in New York and northern New Jersey. To speak to a member of our skilled legal team, contact us today online or at (212) 380-8117.
List of New gTLD Applied-For Strings, Internet Corporation for Assigned Names and Numbers, June 13, 2012
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