In opening up for the .BRAND top level domain, ICANN has artificially created a scarce resource of great commercial value. Indeed, the values of the .BRAND TLDs may be astronomical due to the investments made by the companies that own the trademarks represented in the .BRAND TLD.

While the above is interesting in its own right, I will here focus specifically on how we deal with situations where more than one company has a legitimate trademark interest in a particular .BRAND TLD. Such situations can occur due to the fact that, while trademarks can happily coexist in different countries and/or for different categories of products, there can of course only be one .BRAND TLD for the ‘core’ of each trademark (e.g. while one can imagine many variations such as .volvogroup, .volvocars etc, there can be only one .volvo).

The ICANN approach to such disputes

The current process applied by ICANN to resolve disputes about .BRAND TLDs is complex and consists of several steps. And ultimately, where the dispute is not resolved, it is decided by an auctioning process from which ICANN stands to gain substantial amounts of money from the highest bidder. While the funds obtained through the auction process must be used in a manner that supports directly ICANN’s Mission and Core Values, this role of ICANN as a beneficiary of disputes, in a sense under ICANN’s own control, is of course controversial from the perspective of procedural fairness.

Most importantly for our context here, however, the process in place will result in one of the trademark holders getting the rights to the disputed .BRAND TLD while the other, or indeed others, miss out.

The problems with this are only partially mitigated by the fact that the losing party may register a variation of the mark. While a dispute about the name .volvo may result in the winning party gaining the .BRAND domain .volvo, and the losing party opting for e.g. .volvocars, the potential for consumer confusion is great indeed. This is particularly so where the trademark holders are in the same field of business.

Sharing – a better option?

I wonder whether we cannot find a better solution; a solution departing from the win/lose thinking characteristic of legal processes. Could not a domain name be shared? Indeed, is it not the case that, in many situations, .BRAND TLDs are eminently well suited to be shared by multiple holders of the same trademark?

Examples of domain name sharing are rare, but can be found. If you, for example, visit the domain winterthur.ch you are presented with a portal page on which you can choose whether you wish to visit the website of the city Winterthur, the region of Winterthur, Winterthur tourism, or the insurance company Winterthur. In other words, all these different units are sharing the winterthur.ch domain in a way that caters for their respective interests and, importantly, that avoids consumer confusion.

Provided a suitable contractual arrangement can be found—including as to the function as a registrar—.BRAND TLDs could be shared by holders of the same trademark in a similar manner. However, technology also caters for a more sophisticated approach. In the case of trademarks from different countries, we can use geo-location technologies to ensure that we do not even need the type of portal page used in the winterthur.ch example. Using geo-location technologies visitors to the website may be directed to the appropriate company under the relevant .BRAND TLD based on their geographical location. This way, visitors to a particular .BRAND TLD may, while remaining on that .BRAND TLD, be directed to the content of one trademark holder, while visitors from another country, while also remaining on that .BRAND TLD, may be directed to the content another trademark holder. The risk of consumer confusion could be mitigated by banners, and is in any case no greater than where the trademark holders register different variations of the same mark.

Critics may here question whether geo-location technologies are sufficiently accurate. Such a question is appropriate, but the answer is a clear yes. Try typing in google.com when you are in Germany, for example. If you do so, you are automatically taken to google.de. Similarly, when entering google.com in Sweden, you are automatically guided to a Swedish version of Google search. So these technologies exist, they are used and they work.

But can they not be circumvented then? Again the answer is yes. But the risk of circumvention corresponds directly to the perceived value of the content that can be accessed through the circumvention. Therefore, e.g. websites containing popular, but geographically restricted, copyright protected content like movies or music only released in some countries but not others, are obvious targets for circumvention. But who would seek to circumvent geo-location technologies merely to view a trademark—the incentive for circumvention is missing entirely in the trademark setting.

Challenges ahead

The introduction of the .BRAND TLD structure has meant that, where there is more than one holder of a particular trademark, those trademark holders are forced to fight over a scarce resource artificially created by ICANN. Thus, the system constructed by ICANN may—if the win/lose approach continues—create few winners, but many losers. To avoid this, proposals like that presented above ought to be carefully considered. And now is the time to do so.

I hasten to admit that the proposal above requires us to rethink aspects of the administration of .BRAND TLD and I acknowledge that some challenges need to be faced before the proposal can be implemented. Yet, it may be the best option we have to minimise the negative—win/lose—impact of the .BRAND TLD structure.