JUrISdIctIOn repOrt: cAnAdA
IcAnn prOpOSeS
UnLImIted neW tLdS
Jonathan c. cohen and Victoria carrington
Shapiro Cohen
Some months ago, the world press reported that the board of directors
“tHere Are cUrrentLY 22 GenerAL tOp
of ICANN (Internet Corporation for Assigned Names and Numbers),
LeVeL dOmAInS (GtLdS) Under tHe
a not-for-profit California corporation created by the United States
Department of Commerce to provide technical and policy oversight and
AUSpIceS OF IcAnn, IncLUdInG tHe mOSt
management of the domain name system (often incorrectly referred to as
WeLL-KnOWn .cOm, .net And .OrG.’’
the ‘government’ of the Internet), had approved a process for introducing
an unlimited number of new top level domains (TLDs) into the domain
name system (DNS).
In addition, while often overlooked in discussions about the dangers
There are currently 22 general top level domains (gTLDs) under the to trademarks in the DNS environment now and as envisioned for the
auspices of ICANN, including the most well-known .com, .net and .org. future, one of the real victims is the public. The misuse of domain names
There are also approximately 250 country code TLDs (ccTLDs), such as defrauds members of the public. They are directed to sites under false
.ca and .us, which are generally under the management of the pertinent pretences, they purchase goods that are different from those that they
national group and/or government. want, and they are the victims of other fraudulent behaviour based on
the misuse or misappropriation of trademarks. In an environment that is
In the DNS environment of fewer than 300 TLDs and only 22 gTLDS,
unchecked and unpoliced, the potential for damage to the public and to
there has been a significant amount of cybersquatting and other forms
well-known brands and their owners is very grave.
of cybercrime. Some of those responsible are extremely clever and are
excellent at hiding in the ‘electronic woods’. The Internet affords cover to
In recognition of this clear and present danger, the ICANN board at
the skilful technical expert, who can move from site to site and TLD to
its March 2009 meeting in Mexico City approved the creation of a
TLD in milliseconds, using such techniques as botnets and fastflux when
committee of experts to consider the overarching trademark problems
carrying out unethical or illegal activities that range from taking unfair
created by the introduction of an unlimited number of new gTLDs. The
advantage of well-known marks to out-and-out criminal activity such as
committee, called the IRT, is comprised of an international group of
identity theft or worse.
recognised experts in the fields of trademarks and domain names with
considerable experience and understanding of the DNS, ICANN and the
Among those that have expressed considerable concern about the impact
UDRP. The experts include the author Jonathan Cohen, the only member
of a DNS of hundreds, if not thousands, of TLDs are brand owners and
from Canada.
members of the intellectual property community concerned about the
implications for trademarks. In the current DNS, many owners of well-
The IRT presented a set of recommendations to the ICANN board in
known marks are faced with dozens if not hundreds of legal actions,
Australia in June, 2009. The recommendations of the IRT can be viewed
UDRP (Uniform Domain-Name Dispute Resolution Policy) cases and
at: http://www.icann.org/en/topics/new-gtlds/irt-final-report-trademark-
numerous other efforts to settle disputes involving domain names.
protection-29may09-en.pdf
In one way or another, these disputes negatively affect the rights enjoyed
We urge readers to read and actively support the recommendations by
by the brand owners in their trademark(s). In addition to the very large
writing to the ICANN board and to notify clients about the impending
number of legal disputes they must prosecute in order to protect their
changes in the DNS. The board is expected to make a decision on the
marks, many are forced to keep huge stables of defensive domain names
recommendations at its meeting in Korea in October; therefore, voices in
so that others cannot have them. Some major companies own, and
support should be heard soon.
maintain through annual payments, 20,000 to 30,000 defensive domain
name registrations.
The reasonable concern of these trademark owners is that if there are
Jonathan C. Cohen is senior managing partner at Shapiro Cohen. He can
hundreds or thousands of new TLDs, the potential for cybersquatting or
be contacted at: jcohen@shapirocohen.com
the need to obtain and hold defensive registrations could reach levels that
are extremely high and that carry serious financial and administrative Victoria Carrington is a partner at Shapiro Cohen. She can be contacted
consequences. at: vcarrington@shapirocohen.com
www.worldipreview.com World Intellectual property review September/October 2009 57
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