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Horse's Head in a Trademark Owner's Bed

Recently, the Internet Corporation for Assigned Names and Numbers (ICANN) unveiled its Trademark Clearinghouse (TMCH), a tool it proposes will help fight trademark infringement relating to another of its new programs — generic top level domain (gTLD).

As Lafeber describes, criticism of ICANN's gTLD program and subsequent TMCH database is mounting. Skeptics have noted that given the significant cost of registering a gTLD — the application fee is $185,000 and subsequent annual fees are $25,000 — the program appears to be solely a cash cow, without adding much value to Internet users. In fact, Esther Dyson, ICANN's founding chairwoman, was quoted in August 2011 (during the nascent stages of the gTLD program's development) as saying:

"Handling the profusion of names and TLDs is a relatively simple problem for a computer, even though it will require extra work to redirect hundreds of new names (when someone types them in) back to the same old Web site. It will also create lots of work for lawyers, marketers of search-engine optimization, registries, and registrars. All of this will create jobs, but little extra value."

While the gTLD program lacks intrinsic value-added, and may in fact have anticompetitive effects given its exorbitant fees, I think there may be something more nefarious at play here. Essentially, ICANN has positioned itself as the Corleone family of the Internet space, making an offer no one can refuse. ICANN created a market in which individuals can launch new gTLDs, even using another's trademark-protected brand as their domain extension. Subsequently — and here's where the mafia-like "protection" arises — it has "offered" trademark owners the ability to head off infringements by either buying their gTLDs or receiving notification if an infringing gTLD is registered by another party.

Programs to monitor the use of one's brand in a domain name have long existed. The TMCH charges subscribers $95 to $150 annually to be notified of the registration of infringing gTLDs. Instead of extorting fees to be the watchdog for illegal activity ICANN itself facilitates, it could more ethically operate its gTLD program by mining publicly available government databases and instituting a freeze on registration of questionable domain names. Moreover, it could even provide a valuable service by offering a clearly defined resolution process for trademark disputes.

The gTLD-TMCH pairing is the proverbial horse's head in a trademark owner's bed.

By James Delaney, Chief Operating Officer at DMi Partners

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