New domain names, same old trademark problems

As Net addresses like .pink, .flights, and .coffee arrive, trademark holders have some new versions of old headaches. Canyon Bicycle prevailed to claim canyon.bike, though.

Stephen Shankland Former Principal Writer
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Stephen Shankland
2 min read

ICANN, which oversees many fundamental Internet issues, is letting organizations add hundreds of new generic top-level domains like .nyc, .buzz, and .photography to the Net.
ICANN, which oversees many fundamental Internet issues, is letting organizations add hundreds of generic top-level domains like .nyc, .buzz, and .photography to the Net. Screenshot by Stephen Shankland/CNET

The trademark protection worries raised by the explosive expansion of new Internet domain names are no longer abstract.

Canyon Bicycle, a seller of road, mountain, and triathlon bikes, won what it says is the first trademark dispute involving the new class of new generic top-level domains (GTLDs). Web sites and e-mail addresses today use well-known top-level domains such as .com and .edu, but hundreds of new ones such as .rentals, .fish, and .nyc are arriving as as Net overseer ICANN accepts hundreds of new Net addresses.

In this case, Canyon Bicycle attorneys got control over canyon.bike through the Uniform Domain Name Dispute Resolution Policy. The mechanism is designed to handle disagreements without needing to go to court, but Canyon Bicycle hired a law firm, Hogan Lovells, to do the work anyway.

"The defendant, a bicycle enthusiast and Web designer based in the Netherlands, had registered the 'canyon.bike' domain name only seconds after the open launch of .bike and was financially gaining from the Web site by the use of pay-per-clicks," a form of advertising, according to Hogan Lovells. "The cross-border team at Hogan Lovells succeeded in shutting down the Web site and transferring the domain name to its rightful owner."

ICANN -- the International Corporation for Assigned Names and Numbers -- has launched the new domains after a years-long project to address concerns. At the top of the list is the worry that those with brand names to protect now will have vast new tracts of cyberspace to patrol and enforce. Although it's expensive and complicated to get ICANN's approval to run a new registry such as .bike, .catering, or .dating, it can be easy and cheap to get rights to use subdomains like canyon.bike.

According to the World Intellectual Property Organization's account of the canyon.bike case, the defendant was Rob van Eck, a cyclist and Web designer in the Netherlands. He said he registered canyon.bike in part to "get in (friendly) contact with Canyon" and that he registered some cycling-related domain names "to protect companies" from domain squatting.

Domain squatting is the practice of registering a domain in the expectation that somebody else will pay a lot to acquire the rights to use it. It's long been an Internet headache for those with a brand to protect, though ICANN is trying to make things easier with a new trademark clearinghouse that lets organizations register trademarks and receive alerts about registration activities involving those trademarks.

Van Eck's actions didn't impress Andrew Lothian, who oversaw the case. "The record does not...support [van Eck's] insistence of a good-faith motivation," Lothian wrote. Van Eck's email indicates that he "was looking to be financially compensated in respect of the registration of the disputed domain name."

A company called Grand Hollow runs the .bike registry, though others such as GoDaddy and Domania sell .bike subdomains.

ICANN has accepted 175 new GTLDs for use so far, the nonprofit organization announced Monday.