As Numbers of gTLDs Rise, So Do Cybersquatting Claims

Rhett Pardon

SAN FRANCISCO — New generic top-level domain names are now flooding the Internet, creating opportunities for many businesses but also causing concerns with brand holders, including adult entertainment companies.

As the numbers of gTLD "strings" rise, so are the numbers of cybersquatting cases being filed with arbitrators with WIPO and National Arbitration Forum, which both provide international alternative dispute resolution services for domain names under the Uniform Domain Name Dispute Resolution Policy (UDRP).

More than 1,300 new strings could be introduced into the Internet's authoritative database, called the root zone, in the next few years.

To date, since late last year, ICANN has delegated 325 new gTLD strings — like .club, .moe, .press, and .hiphop — to those entities looking to market by category their product or service.

With the sheer numbers of new domain names now surfacing, many in the legal community believe it's time for brand holders to be on the lookout for cybersquatters who may try to poach their trade names.

Industry attorney Marc Randazza told XBIZ that he's seen lately a "major uptick" in UDRP complaints being brought by his clients, who mostly count those in the adult entertainment business.

"If you have a business worth running, you have a business worth cybersquatting on," Randazza said. "And if you are one of the businesses that decides 'oh we will just worry about this later,' then you're one of the businesses that is going to lose out."

Gill Sperlein, another industry lawyer, said that without question, the numbers of UDRP cases will balloon over time.

"There is no doubt that with the ability to register new domains, there will be an increase in the number of domains specifically registered to trade off the good will of existing companies ... in other words bad faith registration," Sperlein told XBIZ.

"Existing companies and trademark owners should easily be able to defeat these registrations and force the transfer of the domain name registrations," he said. "Unfortunately, there is significant cost associated with bringing an action.  Trademark owners will need to make a business decision of which names to defend."

But Sperlein offered some advice that might save money: Scoop up all the domains you can afford. 

"In general it will be cheaper to register as many various on your name as you can," he said. "Unfortunately, there are now so many possibilities it is impossible to guard against them all through preemptive registration. In short it will be a mess."