Posts Tagged ‘ICANN’

ICANN is considering creating a central database of trademark registrants to help them fend-off future domain name cybersquatters.

The action is being prompted by the likelihood that ICANN will authorise up to 100 new domain name-suffixes within the next 12 months (e.g. .hotel .london etc).

Although trademark holders have always been given preference when a new TLD has been created - in order to avoid mass cybersquatting on the new top-level domain - the prospect of hundreds of new TLDs created in so short a period of time has worried trademark holders over the cost and time required to protect their trademarks. Each of the TLDs will have their own rules and regulations which will escalate the administrative time and cost beyond the mere registration process.

The database will attempt to help the holders by automatically preventing the registration of a trademark by anyone other than the trademark holder. This alleviates the need for the trademark holder to register in each new TLD to protect their rights.

It will not prevent someone else registering the trademark entirely, it will merely make them jump through a few hoops - for example, showing a legitimate use for the name. If RedRose is the trademark of a restaurant in Leeds, this would not stop a “RedRose.london” registration by a London-based hotel.

There is also the problem of conflicting trademarks to be solved: what happens when US and German trademark holders for their respective countries try to both register, for example, “Imperial.hotel“? Who will have precedence?