17 March 2014Trademarks

Gurry warns about new gTLD uncertainty

The World Intellectual Property Organization’s (WIPO) director general has warned trademark owners they face increasing disruption as the domain name system (DNS) continues to expand.

ICANN has approved more than 1,400 new generic top-level domains (gTLDs), the first of which have already gone live, and new registries are expected to go live regularly for the next year.

But Francis Gurry said trademark owners have been facing “significant uncertainty” over the gTLD rollout while simultaneously working with reduced protection budgets.

“The proliferation of potential web addresses ... will force trademark owners to adjust their priorities in terms of registration and protection choices,” he added.

Gurry has issued warnings about the gTLD programme previously. In March 2012, four months before ICANN revealed the list of around 1,900 applications, Gurry said the “massive” increase in domain names will stretch brand owners’ resources.

Some brand owners fear that cybersquatting will rise as the DNS grows. The latest figures from the Trademark Clearinghouse, a central database of trademarks, show that nearly 18,000 cybersquatting warnings have been sent to rights owners.

However, not all of those warnings necessarily correspond to cybersquatted domain names.

WIPO has resolved the first dispute under the Uniform Domain Name Dispute Resolution Policy in favour of Canyon, which complained over “canyon.bike”. In a statement, WIPO said that this and other new gTLD cases it receives will provide insight into “how brand owners spend legal budgets in the new domains”.

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