Plans to introduce new generic top level domains (gTLD) - including .sex and .shop - could cost companies more than they expect.
Icann, the Internet Corporation for Assigned Names and Numbers, is charged with administering the top level domain structure, and is investigating whether or not it should introduce a range of new names, like .art, .shop, .sex and so on. An Icann working group, the Domain Name Supporting Organisation (DNSO) is considering its recommendations on the number of new gTLDs and the possible impact on trademarks.
"If you want to secure your trademark across all the new domain names then sure, it will cost you more," says trademark specialist lawyer, John Glengarry of Auckland-based law firm, Bell Gully Buddle Weir.
Trademark lobbyists in the US say that a better domain name dispute resolution, and a more comprehensive "whois" database of registry information are needed before new names are introduced. They're also pushing for a list of "famous marks" that would automatically be accorded trademark protection in any new domains.
That should go a long way to addressing the concerns about the additional cost of registering trademarks in these new domains. "The company I work for has 200 copyrighted names if we have an extra five gTLDs to consider, it will triple our bill. If there are thousands then it becomes too costly to think about," says Internet consultant Cliff Pratt.
One option Icann is considering is the opening up of the gTLD space so that any company listed as a registrar can sell any gTLD a buyer wants. Consequently any suffix imaginable could be developed - .mutt, .kazoo, .toy and so on.
Pratt isn't concerned so much with the cost of registering the names as avoiding spending time arguing the case legally.
In New Zealand the issue of trademarks and domain names has been made clear in the courts.
"We can use the law as it relates to registered trademarks, and as it relates to 'passing off' and also some parts of the Fair Trading Act in order to prevent 'cybersquatting'," says Glengarry.
He says the case is clear cut when it comes to a name that has been bought only to sell to the trademark holder for a profit. "The law steps in quite clearly at that point."
Glengarry says there is a grey area surrounding names that could be used by two companies, say with matching initials, and that's resolved on a first-come first-served basis. "Some companies may opt to share a domain name as a gateway to two separate companies and that's perfectly fine."
Glengarry says ultimately the expanded gTLD structure will benefit companies - allowing companies with the same name but trading in separate fields to have similar domain names.