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New Web Domains Present IP Headaches for Brand Owners

June 13, 2012

Sally Abel, Chair of the Trademark Group with Fenwick & West, was recently quoted in the Law360 article, “New Web Domains Present IP Headaches for Brand Owners.”

The article discussed the recent announcement by ICANN, the international body overseeing Internet addresses, regarding the 1900+ applications they have received to date for their new top-level domains.  These included everything from .Nike to .vodka, presenting brand owners with a greater challenge in protecting their trademarks.

In addition to the applications received for specific brand names such as .Google, ICANN also received numerous applications for generic names such as .food, meaning that brand owners will have to significantly increase the monitoring of their trademark.

While companies previously only had to monitor misuse of their names in Web addresses ending with the familiar .com or .org, the new domains provide ample opportunities for cybersquatters, counterfeiters and other infringers, said Sally Abel of Fenwick & West LLP.

"The enforcement that's already done in the existing domain space is going to increase significantly," she said. "A lot of companies are already strapped, and this is going to put even more pressure on them."

Abel went on to say that having hundreds of new domains out there in which someone could use a trademark without permission will present a such a challenge that it may not be possible for companies to police all potential misuse.

"There are resource constraints for brand owners. They can't put all their profits into taking down any and all infringement on the Internet," she said.​