Lipton, Jacqueline; Wong, Mary --- "Trademarks, free speech, and ICANN's new gTLD process" [2014] ELECD 111; in Calboli, Irene; Lee, Edward (eds), "Trademark Protection and Territoriality Challenges in a Global Economy" (Edward Elgar Publishing, 2014) 307

Book Title: Trademark Protection and Territoriality Challenges in a Global Economy

Editor(s): Calboli, Irene; Lee, Edward

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781781953907

Section: Chapter 14

Section Title: Trademarks, free speech, and ICANN's new gTLD process

Author(s): Lipton, Jacqueline; Wong, Mary

Number of pages: 18

Abstract/Description:

When the domain name system was first introduced in the 1990s, it rapidly became apparent that the new form of Internet addressing would cause issues for trademark holders. Cybersquatters hit the scene early, attempting to extort money from trademark holders for transfer of their valuable online property. Later, more nuanced disputes arose in the domain name space involving contests between competing legitimate trademark holders for the same domain name, as well as contests between trademark holders and gripe site operators ñ those who wanted to utilize intuitive domain names to complain about or otherwise criticize a trademark holder. Issues also arose as to what would qualify as a protected trademark in the domain name space for purposes of legal protection. Domain name arbitrators and courts have accepted trademarks in personal names, some place names, and culturally significant terms, despite their questionable trademark status: this is most obvious in cases where secondary meaning is not apparent.