ICANN’s New gTLD Program has always been regarded with some degree of skepticism from the intellectual property community. After all, in-house counsels tasked with protecting trademarks online previously had to only consider a few legacy top-level domains like .com and .net as well as country code top-level domains like .de and .cn, whereas now they must take action to protect trademarks across hundreds of additional gTLDs. At the International Trademark Association’s (“INTA”) 138th Annual Meeting, which took place May 20-25, 2016, the New gTLD Program was the focal point of one panel discussion, followed by a related Q&A session.
Moderated by Ellen Shankman of Shankman & Associates, the panelists included representatives from registries and registrars alike, including Blacknight Solutions, ICM Registries, Amazon and Google. While the perspectives and opinions shared by panelists varied somewhat, there were a few points of agreement amongst both those speaking and those in the audience.
The Continued Relevance of Domain Names
First, and perhaps most importantly, the panelists indicated that domain names remain relevant. In an age where mobile browsing and apps are increasingly common, domain names still operate as universally understood digital signposts. Whether you are a giant multinational or a small business, having the right domain name(s) gives you a strong digital foothold upon which to build platforms, create content, and conduct business. In addition, there are still plenty of chances to innovate with domain names, as illustrated by the introduction of IDNs and the acceptance and adoption of new gTLDs.
The Importance of ICANN Participation
Second, participation in the ICANN policy development process is paramount for IP and trademark holders. Panelists explained that certain results of the first round of new gTLD expansion – like the relative ineffectiveness of the URS, or the overly complex and overpriced defensive registration measures – came about because the intellectual property community was not successful enough in pushing ICANN to adopt acceptable measures of IP protection.
Judging the New gTLD Program
Finally, ICANN’s new gTLD program is far too young to be judged definitively, particularly when discussing .BRANDS. Despite over 18 million registrations in new gTLDs, there are just over 2,500 registrations across the 330 .BRANDS that have gone live so far. Coordination across multiple internal teams – IT, legal, and marketing, as well as other partners or affiliates – means that developing a strategy for rolling out .BRANDS can be a lengthy process. A far more appropriate point to make a judgment on the Program will be in two or even four years, once adoption of .BRANDS has increased and we better understand their effects on search.
Based on the topics discussed and advice shared by the panelists, domain names remain as important as ever. However, improving online trademark protection mechanisms will only happen if the IP community increasingly participates in ICANN’s policy development processes. For those interested, an excellent way of joining the discussion is contributing to the ongoing review of rights protection mechanisms for new gTLDs.
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