The idea behind replacing trademark protection with discussions about branding on the Internet was innovative but, at the same time, it provided the only route for the trademark community to voice again its objection on the new gTLD process and the inefficiency of the rights protection mechanisms that have been recommended by the Special Trademark Issues (STI) team. It was innovative because, on the one hand, the trademark community was conscious of the fact that re-opening the trademark protection issue would alienate them within the new gTLD process and, on the other, ICANN was not willing to stall the process (again!) because of trademark issues. So, brand owners were left with no choice but to try a different approach by attempting to dissuade the community from new gTLDs. At least, that was my reading after attending the panel session, which was entitled: “Brand Management in the Age of new gTLDs”.
At this session, which was comprised by trademark attorneys representing big brands like the BBC, Nestle, the Red Cross, etc, the brand community appeared united against the new gTLD program, expressing their indecisiveness on whether they would apply for their <dotbrands>, arguing that users would not necessarily relate to this new state of domain name affairs, consumers would be more confused and claiming that the new gTLD process was financially burdensome with high costs and no assurances.
It is indeed true that ICANN’s application process for new gTLDs is highly costly - $185,000 costly to be precise and that is only to submit an expression of interest. But, are these brand owners really arguing that they cannot afford to spend that kind of money, when they spend even more to pay their attorneys to send cease and desist letters, draft UDRP claims and pay their first-class tickets to participate to ICANN meetings? Are they expecting us to believe that there is no benefit in having all their multiple brands under a single gTLD – the name of their main brand – which will allow them to promote their goods and services in a more efficient and organised manner?
But, the truth is that we really don’t know how users and consumers will welcome this new process. It is also though true that the <dotcom> space has created this artificial scarcity and has given birth to the mistaken assumption that the DNS is this exclusive trademark territory, hostile to anyone else that is not a member of the trademark club. This is not trademark law or, better yet, this is not the kind of trademark law we teach our students to apply. Trademark law is not meant to create a hostile environment for new entrants and does not claim exclusivity in words or spaces. It claims exclusivity in goodwill.
And, let’s be honest here. Consumers and users are neither idiots nor do they get confused that easily. Trademark owners know that, as do consumers. I revisited the other day an article, written by trademark law czar, Thomas McCarthy, who was asking whether uses of AMAZON – a brand sizeable to the BBC and Nestle – for gardening services, hiking and survival equipment, restaurants or women’s health spas would confuse consumers. “My thought is that, to a majority of consumers, these uses would not immediately call to mind that particular use of the word “Amazon” as a famous mark for an online seller”. As far as I am concerned and I only speak for myself here, if professor McCarthy is asserting such a thing, it is not only valid but the reality of trademark law.
But the main question still remains unanswered: why does ICANN's trademark community not want new gTLDs? Well, as I said previously, they asserted that new gTLDs come with high costs and indeterminative expectations. The marketing of these new gTLDs might be excessive and arduous and it actually might fail; it can go wrong but it can also go right. If organised correctly, it can work to the benefit of both the trademark community and the social aspect of the DNS.
Imagine brands like Dr. Who, Dancing with the Starts, Top Gear - all BBC brands - under the .BBC gTLD. Imagine how trademark-friendly and commonsensical it would be for BBC to have full control of their space, which hosts all their brands; imagine how easy it would be for BBC to communicate to users the <dotbbc> as the only legitimate site and how beneficial it would be for consumers not to fear that the site they are visiting is genuine. For the past ten years, we have been told that this is the case; a DNS with too many abusive registrations, too much fraud, too many illegitimate domain names. For the past ten years, trademark owners asserted that the DNS is a dangerous territory and we need stronger forms of trademark protection if we want to be safe. So, does it not make more sense to help us create this safe place that we know is hospitable, welcoming and friendly?
Needless to say that the DNS needs new gTLDs to go back to its social roots and try and approximate to the particularities of trademark law. Trademarks fall under classes of goods and services and for me this would be the logical thing to do in the DNS. They are also associated with the goodwill of a product and what a better way to represent this goodwill with a <dotbrand> extension.
It is, therefore, indeed disappointing to hear what the panel said during the discussion. We really should give this a chance. We will see pretty soon whether it can fail and we can easily terminate it in such a case. But, if it succeeds, then much of our problems might actually disappear. It will take some time to educate users and consumers but the same way we did it with the <dotcom> we can do it with any <dotbrand>.
So, let’s really give this a chance!