Naming Rights in Conflict Geo-TLDs and the Trademark Dilemma

The expansion of the domain name space under ICANN’s new gTLD program has brought a wide array of possibilities to the internet’s namespace. Among the most contentious and illuminating developments has been the introduction of geographic top-level domains (geo-TLDs), such as .paris, .nyc, .berlin, and .tokyo. These TLDs are designed to serve the interests of specific cities or regions, enabling local governments, businesses, and citizens to create place-based digital identities. However, their emergence has provoked legal and policy disputes with trademark holders, particularly those whose brands overlap with geographic names. The central question is deceptively simple: when a term serves both as a globally recognized trademark and as the name of a city, who has the superior right to use it as a domain extension? This issue strikes at the heart of internet governance and the balance between public interest, commercial rights, and the evolving semantics of identity in cyberspace.

The tension arises because geographic names and trademarks often coexist in the same linguistic space without issue in traditional legal frameworks. A city and a company can share a name without conflict as long as they operate in different spheres of commerce or geography. But the domain name system is inherently global and structurally flat—there is only one .paris, and its control implies a sweeping digital authority over that string. This convergence has led to clashes where both municipalities and corporations claim legitimate rights to a name. For example, what happens when a brand named “Paris” in the fashion industry objects to the use of .paris by the City of Paris to promote tourism, culture, and local businesses? Does the commercial trademark override the civic identity, or vice versa?

ICANN attempted to address this challenge through its Applicant Guidebook and the new gTLD application process, which recognized geographic names as a protected category. Any entity applying for a geo-name TLD was required to secure support or non-objection from the relevant government or public authority. This requirement was designed to prevent private companies from appropriating geographic terms without local consultation. As a result, TLDs like .nyc were awarded to the City of New York, .paris to the City of Paris, and .tokyo to a Japanese registry operator with Tokyo Metropolitan Government’s endorsement. Trademark holders had the right to file formal objections, but only under specific grounds—such as a “Legal Rights Objection,” which required proof that the applicant’s use would unjustly infringe upon an existing mark.

Despite these mechanisms, friction persisted. In the case of .amazon, one of the most infamous examples of a name conflict, Amazon Inc. applied for the TLD, arguing its globally recognized brand justified exclusive control. However, several South American governments, led by Brazil and Peru, objected, arguing that the Amazon River region represented a vital part of their cultural and environmental identity. Though not a city name, the case underscored the larger issue: what happens when a name is both a brand and a public symbol? ICANN’s decision to side with governmental interests over the corporation, after years of stalemate and political negotiation, highlighted the precedence geo-claims could hold in certain contexts.

On the other side of the spectrum, companies have raised concerns that geo-TLDs open the door to misuse and confusion. A brand that shares its name with a city might worry that .paris or .london could be used in a way that dilutes its brand, misleads consumers, or fosters cybersquatting. Trademark holders feared a scenario in which a domain like brand.paris could be registered by unrelated parties under the city’s policy framework, potentially drawing traffic or reputation away from the legitimate brand owner. In some cases, cities offered defensive registration options or reserved names for trademark holders, but these measures varied widely and lacked uniform enforcement.

The collision of rights becomes even more complex when one considers the global enforcement of trademarks. Trademarks are territorial—they are granted by national or regional authorities and often limited to specific classes of goods and services. A mark registered in one country may not be protected in another, and even where it is, it may coexist with identical or similar marks owned by different entities. Geo-TLDs, by contrast, operate globally. A domain registered under .nyc or .paris is visible to users everywhere, regardless of where trademark protection exists. This universality challenges the very structure of trademark law and introduces conflicts that traditional legal systems are ill-equipped to resolve.

In response, ICANN established the Trademark Clearinghouse (TMCH), a rights protection mechanism that allows trademark holders to register their marks and receive notification when matching domains are registered under new gTLDs. While useful, the TMCH does not prevent registrations; it only informs brand owners and gives them the opportunity to initiate dispute proceedings. The Uniform Rapid Suspension System (URS) and the Uniform Domain-Name Dispute-Resolution Policy (UDRP) offer legal recourse in cases of clear abuse, but they are reactive rather than preventive. Moreover, these mechanisms require time, evidence, and cost—barriers that not all brands can afford to overcome, especially when dealing with dozens of new TLDs.

Some cities have taken steps to limit such conflicts proactively. The .nyc registry, operated by Neustar under contract with the City of New York, restricts registration to individuals and entities with a bona fide connection to the city. This local nexus requirement is intended to protect the geographic identity of the TLD and reduce the likelihood of brand confusion. Similar policies exist for .berlin and .paris, which emphasize civic branding and restrict generic or speculative registrations. Yet these models are not mandatory, and many geo-TLDs are managed with looser rules, especially when the registry operator prioritizes commercial viability over cultural stewardship.

The future of geo-TLDs and their relationship to trademarks remains uncertain. As the number of TLDs grows and the semantic landscape of the internet becomes more layered, conflicts are likely to increase. Companies must learn to coexist with geographic registries that may deploy the same terms for entirely different purposes, while municipalities must ensure that their use of a geo-TLD respects global trademarks and avoids diluting valuable brand identities. The ICANN community continues to grapple with this tension, weighing proposals to clarify rights, enhance protection mechanisms, and ensure fairness in allocation.

Ultimately, there is no easy resolution to the question of whose right prevails. Both geographic authorities and trademark holders have compelling claims rooted in legitimacy, history, and law. What is needed is a framework that recognizes the shared nature of language, promotes responsible stewardship of domain spaces, and ensures that the internet remains a place where civic identity and commercial expression can coexist without one overpowering the other. Until such a framework emerges, the conflict between geo-names and trademarks will continue to play out in digital courtrooms and policy forums—each case a reflection of the broader challenge of governing names in a connected world.

The expansion of the domain name space under ICANN’s new gTLD program has brought a wide array of possibilities to the internet’s namespace. Among the most contentious and illuminating developments has been the introduction of geographic top-level domains (geo-TLDs), such as .paris, .nyc, .berlin, and .tokyo. These TLDs are designed to serve the interests of…