You may recall that we reported about “one of the biggest changes in the Domain Name System” was about to be implemented by ICANN, which was introducing hundreds of new top level domains that could “end with almost any word in any language.” So, instead of such dependable and familiar domains like “nike.com” and “nikon.com”, you could have “nike.shoes” or “nikon.camera.” Pretty cool, right? Well, maybe not so much for trademark owners.
The roll out of the new domains has been slow-paced, however, as registrars come on line with the new domains (after paying hefty application and registration fees) some trademark experts worry that the explosion of top level domains places too much burden on brand owners to police their marks and purchase unwanted domains for the sole purpose of keeping them out of the hands of would-be cyber squatters and infringers. Francis Gurry, the head of the World Intellectual Property Organization (WIPO), is on record of stating that the impact upon trademark protection is “likely to be significant and disruptive.” SecurityWeek.com quoted Gurry:
‘The opportunity for misuse of trademarks expands exponentially,’ said Gurry, noting that registering a domain name is a cheap, automatic procedure that takes a matter of seconds and does not have a filter to examine whether there is a trademark conflict.
According to the same SecurityWeek.com article, in 2013, 2,585 cases involving 6,191 domains were were filed with WIPO, which is one of the arbiters in charge of domain disputes. It is currently hearing its first case concerning a new gTLD in which a German company, Canyon Bicycles GmbH, is objecting to a Dutch registrant of canyon.bike. The German company is a worldwide distributor of bicycle products and is involved in numerous international cycling events. The registrant of the domain is an individual based in the Netherlands who states that he is a cyclist and web designer in the cycling industry. The disputed domain name points to a website parking page provided by the Registrar which, according to the screenshot provided by the Center, features sponsored listings including one entitled “Mountainbikes”. To learn more about the case visit WIPO’s website.
This case may foreshadow many more similar disputes. We’ll keep you posted.
— Adam G. Garson, Esq.