Trademark lawyers’ Full Employment Act?

The board of directors of the Internet Corporation for Assigned Names and Numbers (ICANN) approved a plan to allow generic, top-level domain registrations of any word.  Trademark lawyers will be vigilantly watching potentially infringing domain names. Soon we might see .phone, or .automobile, but maybe .tiffany or .appstore.

ICANN thought through some of this, as they have instituted high fees to keep cybersquatters/counterfeiters at bay:  up to $185,000 plus an annual maintenance fee of $25,000. Theoretically, they will have ethical screening standards in place, as well. (Applications can begin January 12, 2012.)

Aside from obviously infringing URLs, Geri Haight in the National Law Journal described some other trademark issues this way:

• Companies with the same trademark (for different products) might compete for the same domain name
• Cybersquatting can take place on “both sides of the dot” in a URL; this will probably be the biggest playing field, as an individual registrar would have to practice the same rigor as ICANN in order to keep out the cocacola.softdrink cybersquatter
• The application process is complicated
• Representation will be required in any opposition (to the granting of a top level domain name) at ICANN, and it can be expensive. “We’ve created a brand new system to all for a rapid takedown” of an infringing domain, said Peter Dengate Thrush, outgoing Chair of ICANN.  “The tradeoff is if someone brings a case, it’s got to be argued and proved to a …high standard.”

Another issue will be the complications that will arise when an existing trademark is broken up by a cybersquatter.  For example, if a new domain name is .book, one might apply for face.book. As BVR’s IPBlog has written about in the past, the courts have split on secondary trademark infringement issues with respect to the website host, and the registrar appears to escape liability; primarily, it is the “advertiser” who is saddled with the potential liability.