June 22, 2017
While the upcoming round of applications for the delegation of new top-level domains should primarily focus on companies wishing to acquire a .BRAND, the Internet community and trademark counsels are concerned about the possible conflicts of interest between trademark rights and geographical terms.
The first round of applications had already brought its share of surprises. Notably, the application for .AMAZON by the eponymous company was challenged by several latin-American countries. The government of Morocco also disputed the delegation of the .TATA extension for which application was filed by the Indian group Tata, on the grounds that TATA is the name of a Moroccan province.
As the opening of the new round of applications for the delegation of new gTLDs is fast approaching, companies must take into account possible restrictions which could lead to the refusal of their application.
In order to achieve a sustainable solution, ICANN proposes that a database of geographic terms be created, into which national governments could add place names, geographical features, regions, national monuments, etc, and for which delegation as a BRAND would be prohibited without the prior approval of the relevant government. Opposition to that database was rapidly apparent and justifiably so, particularly with regard to the restrictions that this database would impose on a company’s right to use its trademark.
Paul McGrady suggests what appears to be a fairer solution: the applicant of a .BRAND which contains a geographic term would, upon request of the relevant government, undertake not to use its .BRAND TLD in any manner likely to cause confusion with the designated territory in the minds of the general public.
This alternative option will be presented in detail at the ongoing ICANN meeting in Johannesburg.
IP Twins can help you to obtain you own .BRAND extension, from a feasibility study to the drafting of the application and its acceptation, and ultimately to the registration of your domain name. Please do not hesitate to contact us at [dotBrand@iptwins.com](mailto :firstname.lastname@example.org) for further information.