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RFC Express - New IP Lawsuits

Domain Brand Enforcement Offers New Challenges Post-ICANN

By William D. Schultz and George C. Lewis, J.D., P.E. of Merchant & Gould


The Internet Corporation for Assigned Names and Numbers (ICANN) is the group responsible for the global coordination of the Internet's system of unique identifiers.  The organization concluded its 32nd International Public Meeting in Paris this summer by approving the proposal to expand the world’s Domain Name System and to work on adapting it to accommodate top level domain names in scripts such as Arabic, Cyrillic or other non-Latin scripts.  In addition, and perhaps more importantly for those interested in brand protection, this proposal opens the door for companies and individuals to apply for new top level domain name extensions.  The increase from 21 to a potentially unlimited number of top level domain name extensions will fundamentally change the enforcement of brands on the Internet.

The brand protection analysis will now be at two levels.  First, trademark owners will have to consider acquiring the top level domain name (sometimes also referred to as the “extension”) itself, what used to be the “dot- com” and that under the new system may be “dot-[anything]”.  For example, IBM may want the top level domain name “.ibm”, Delta Airlines may want “.delta” and the Burlington Northern Santa Fe Railroad may want “.bnsf”.  

It is predicted that online...

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