New web rules could threaten brands

16 March 2009

GENEVA: The launch of new online domains – which could add postfixes such as the names of brands or individuals to the existing options like .com and .org – runs the risk of confusing consumers and increasing the costs for brand owners to protect their trademarks, warns the United Nations.

The Internet Corporation for Assigned Names and Numbers manages the range of "top-level" domain names available when setting up websites, and plans to increase the number on offer when from the current total of just 21.

However, Francis Gurry, director-general of the World Intellectual Property Organisation, a UN agency, says doing so would mean that brand owners and trademark holders would face a "nearly unmanageable task" to protect their properties.

It is feared that "cybersquatters" will register multiple websites using the name of a brand, either to force its owner to pay for the site address or to attract advertisers to those domains.

Another issue is the prevalence of "tasting", whereby trademark owners set up a variety of websites with similar domain names under the free trial period currently permitted, in order to see which produces the highest level of consumer interest and advertising revenue.

WIPO thus suggests introducing regulations that would protect names under trademark, therefore cutting down on behaviour that might "cause or materially contribute to trademark infringement".

Such provisions could include outlawing users registering a domain name in the knowledge that they are violates a trademark, and establishing a detailed protocol in order to comprehensively protect brand owners' registered properties.

Data sourced from Financial Times; additional content by WARC staff