Tag: domain names

February 2016 – gTLD Sunrise Periods Now Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the “dot” in a domain name) have launched their “Sunrise” registration periods.

As of December 31, Sunrise periods are open for the following new gTLDs:

  • .YACHTS
  • .BOATS
  • .xn--tckwe (.コム – Japanese for “.com”)
  • .HOTELES
  • .BET
  • .BIBLE
  • .barcelona
  • .PET
  • .istanbul
  • .ist

ICANN maintains an up-to-date list of all open Sunrise periods here. This list also provides the closing date of the Sunrise period. We will endeavor to provide information regarding new gTLD launches via this monthly newsletter, but please refer to the list on ICANN’s website for the most up-to-date information – as the list of approved/launched domains can change daily.

Because new gTLD options will be coming on the market over the next year, brand owners should review the list of new gTLDs to identify those that are of interest.

Article By Monica Riva Talley, Tracy-Gene G. Durkin & Ivy Clarice Estoesta of Sterne, Kessler, Goldstein & Fox P.L.L.C.
© 2016 Sterne Kessler

Year End 2015 Update – gTLD Sunrise Periods Now Open

New generic top-level domains (gTLDs, the group of letters after the “dot” in a domain name) have launched their “Sunrise” registration periods. As of the date of this newsletter, Sunrise periods are open for the following new gTLDs:

.OFFICE

.feedback

.family

.auto

.cars

.car

.lasalle

.cloud

.wine

.vin

.theatre

.SECURITY

.PROTECTION

.xn--tckwe (.コム – Japanese for “com”)

.YACHTS

.BOATS

.HOTELES

ICANN maintains an up-to-date list of all open Sunrise periods here. This list also provides the closing date of the Sunrise period. We will endeavor to provide information regarding new gTLD launches via this monthly newsletter, but please refer to the list on ICANN’s website for the most up-to-date information, as the list of approved/launched domains can change daily.

Because new gTLD options will be coming on the market over the next year, brand owners should review the list of new gTLDs to identify those that are of interest.

Article By Monica Riva Talley, Tracy-Gene G. Durkin & Shana L. Olson of
Sterne, Kessler, Goldstein & Fox P.L.L.C.

© 2015 Sterne Kessler

Are You Ready for the Coming Explosion of Cybersquatting?

Dickinson Wright Logo

 

The next wave of domain-name barbarians is gathering outside the gates. Here’s what you need to do now to keep your trademarks, and your e-commerce, safe.

Almost every business has had to deal with cybersquatters – pirates that launch web sites designed to divert customers by using domain names that mimic the business’s trademarks.

Until now, the war has focused primarily on domain names within the “.com” sphere. But the battlefront is about to expand – dramatically.

The international body that runs the Internet (called ICANN) has recently begun releasing new generic top-level domains (“gTLDs”). In addition to the familiar “.com,” this program makes it possible to set up a business name, a trademark, a geographic designation – virtually any word in any language – as a gTLD in its own right. Almost 2,000 applications for gTLDs were filed, and more than 1,000 will ultimately be granted. Because many of the new gTLDs will sell domain names to all comers without any attention to whether they are violative of someone else’s trademark rights, they will create a giant new arena in which domain name pirates can operate.

So what should you do now to protect your brands and your domain names?

1. Lock up the family jewels.

ICANN has mandated the creation of a Trade Mark Clearing House, in which owners can list their registered trademarks. It has also required that all newly-released gTLDs offer a 30-day “Sunrise” period in which owners of marks listed in the TMCH get first crack at registering them as domain names. In addition, during the Sunrise period and for sixty days thereafter, other parties that apply for those marks will be advised of the TMCH listing and, if they pursue their application, the owners of the TMCH-listed marks will be notified, giving them an opportunity to invoke various dispute-resolution procedures.

The Trademark Clearance House is now in operation, and it makes sense for brand owners to list at least their “core” trademarks there. These are the marks in which you have invested the most time, energy, and money; the ones most closely associated with your business; the ones you have already had to protect most often in the .com realm.

2. Plan now to make preemptive registrations in gTLDs of particular interest.

An important limitation of the Trade Mark Clearing House is that it protects only against domain names that are identical to your registered trademarks, not to common misspellings, typos, and so on. This leads to a second important step: being prepared to file preemptive domain name registrations for common variations of your brand.

Now is the time to identify specific gTLDs in which you will be especially interested in and to watch for their release dates. For instance, if you’re in the auto industry you will likely want to be active in such gTLDs as “.auto,” “.car,” and the like. As soon as the Sunrise period for one of your identified gTLDs opens, be ready to file immediately. This is an instance where the best defense is a vigorous offense.

Many brand owners were caught unawares years ago when the Internet burst upon the scene, and control of brand-related domain names became crucial. There’s no way to stop the next wave of cyberpiracy. But there’s also no reason not to be prepared for it.

Article by:

John C. Blattner

Of:

Dickinson Wright PLLC

Domain Names and the First Amendment: The Latest Word

The National Law Review recently featured an article regarding Domain Names written by Tim Hyland of Ifrah Law:

 

The intersection of domain names and the First Amendment is not new. Indeed, in the early days of the domain name system, courts considered the issue of whether a domain name registrar could prohibit the registration of domain names on the basis of content – for instance, domain names containing profanities.  See Nat’l A-1 Advertising, Inc. v. Network Solutions, Inc., 121 F. Supp. 2d 156 (D.N.H. 2000); Seven Words LLC v. Network Solutions, Inc., 260 F.3d 1089 (9th Cir. 2001). However, the U.S. Court of Appeals for the Fifth Circuit recently was confronted, in Gibson v. Texas Dep’t of Insurance, with a new twist on the First Amendment as it applies to domain names: whether a particular domain name is pure “commercial speech” (entitled to only limited First Amendment protection) or “expressive speech” (entitled to more extensive protection).

The Texas Labor Code prohibits the use together of the words and phrases “Texas,” and “Workers Compensation,” or similar abbreviations. Nonetheless, Gibson, a workers compensation lawyer in Texas, registered the domain name texasworkerscomplaw.com. On the associated website, Gibson discusses matters relating to Texas workers compensation law and, of course, advertises his law practice. The Texas Department of Insurance took offense to Gibson’s domain name, and sent Gibson a cease and desist letter. Gibson, being a lawyer, sued in federal court, alleging that the Texas Labor Code restrictions violated his constitutional rights.

The Fifth Circuit, in an interesting opinion, addressed the commercial speech/pure speech dichotomy inherent in domain names used by commercial enterprises, but artfully dodged the question of whether the domain name was in fact commercial speech. Instead, the court first analyzed whether, if the domain name was in fact commercial speech (which can under some circumstances be restricted), it was the sort of commercial speech that the Texas Department of Insurance could restrict.

The court found, correctly, that commercial speech can be restricted only if it is “inherently likely to deceive.” The state argued that Gibson’s domain name implied a connection with or approval of the state. The Fifth Circuit dispensed with the state’s argument, noting that since there was nothing to suggest that texasworkerscomplaw.com could not be viewed in a non-deceptive fashion (a truism), the state could not restrict the use of the domain name as commercial speech.

There is a second exception allowing a restriction on commercial speech: A state may regulate non-deceptive commercial speech if the restriction “advances a substantial state interest” and is narrowly tailored to serve that interest. On this issue, the Fifth Circuit sent the case back to the federal district court to develop a factual record. It seems unlikely that the Texas Department of Insurance will prevail in the end, as the statute on which its objection is based is vastly overreaching, and would prohibit anyone providing services relating to workers compensation in Texas from registering domain names that accurately describe what they do. For instance, a physician who performs workers compensation examinations could not register texasworkerscompdoc.com (as of this writing, this domain name is available for the taking).

Obviously, such a domain name is not misleading, and there is no legitimate basis upon which the state can restrict it. Domain names are often a form of speech. Just because they are a relatively new format of expression does not change this fact and give the government a basis to attempt to restrict their use.

© 2012 Ifrah PLLC

Generic Top-Level Domain Names Summit

The National Law Review is pleased to bring you information about the upcoming Generic Top-Level Domain Names Summit:

World Research Group is proud to announce the Generic Top-Level Domain Names Summit : The Challenges and Opportunities Facing the Financial, Pharmaceutical, Consumer Goods, and Other Branding Companies Since ICANNs Program, which will be held onSeptember 13, 2012 in Los Angeles, California. This event will discuss the implications and affects of ICANN’s new top level domain program, the risk and opportunities presented by this revolutionary transformation, and discovering what the next steps are for these companies.

Domain Names Go Creative: Will We Soon See Dot-Poker?

Griffin Finan of Ifrah Law recently had an article about Domain Names published in The National Law Review:

Domain names on the Internet are about to get much more varied and creative. Soon websites will not just end in the few familiar suffixes like “com” or “edu,” but could end in things like “.movie” or ”.lawyer” or “.lol.”

On Wednesday, the Internet Corporation for Assigned Names and Numbers (ICANN), the organization tasked with regulating Internet domain names, released a list detailing who has applied for new suffixes, also known as top-level domains (TLD). This is the third major expansion ICANN has allowed of domain name suffixes, in addition to a few others that have been allowed on an ad hoc basis. The new system will streamline the application process and allow for up to 1,000 new domain suffixes a year.

The application process allowed companies to apply for their own brand name to use as their domain suffix name. For instance, Apple applied for the “.apple” suffix. Amazon applies for 76 names including “.amazon” and “.zappos.” Google applied for over 100 suffixes, including “.google” and “.youtube,” as well as “.lol,” and “.book.”

An interesting development related to the world of online gaming is that four groups applied for domain names that would end in “.poker.” The companies that applied for the “.poker” suffix are U.S.-based Binky Mill, LLC and Dot Poker, LLC as well as European-based dot Poker Limited and Afilias Domains No. 5. Limited.

Now that the initial list of applicants for TLD’s has been released, the public will have 60 days to comment. This time period will allow for companies and organizations to see whether others’ applications conflict with their interests or their intellectual property. After conflicts are resolved, there will be an appeals process. The new addresses likely will not launch until next year.

It remains to be seen whether these new domain extensions will become popular. Some companies may be able to capitalize on the marketing opportunities presented by the new TLD’s and other generic TLD’s that could become much more common. In any event, domain names are surely going to be more creative starting very soon.

© 2012 Ifrah PLLC

Generic Top-Level Domain Names Summit

The National Law Review is pleased to bring you information about the upcoming Generic Top-Level Domain Names Summit:

World Research Group is proud to announce the Generic Top-Level Domain Names Summit : The Challenges and Opportunities Facing the Financial, Pharmaceutical, Consumer Goods, and Other Branding Companies Since ICANNs Program, which will be held onSeptember 13, 2012 in Los Angeles, California. This event will discuss the implications and affects of ICANN’s new top level domain program, the risk and opportunities presented by this revolutionary transformation, and discovering what the next steps are for these companies.

Nothing Revealed on “Reveal Day”: New gTLD Application System Remains Suspended

Recently an article by Geri L. Haight of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding The NEw gTLDs was published in The National Law Review:

The much anticipated “Reveal Day” — so dubbed by ICANN itself — has now come and gone without fanfare.  May 1st was to be the day when ICANN was scheduled to publish the list of all applied-for new generic top level domains (gTLDs) as part of the roll-out of the new Internet era.  Instead, all that was revealed today was that ICANN remains mired in technical glitches.

ICANN announced last Friday that, though it had hoped to re-open the online application system on April 27th, the system would remain shut down.  ICANN now plans to notify all applicants within the next seven business days (by May 8th) as to whether their applications were affected by the “technical glitch” in the TLD application system.  The “technical glitch” at issue is that ICANN’s application system allowed a limited number of users to view some other users’ file names and user names.  For the past two and a half weeks, ICANN has been (and continues to be) reviewing its internal system logs and full packet-level capture of all traffic to and from the application system from when it opened the application system on January 12th until it was shut down on April 12th.  After it notifies all applicants, ICANN will announce a new schedule for reopening the system and allowing applicants to confirm the completeness of their applications.  At the time the application system was shut down, the number of registrants in the system was 1,268. According to ICANN, this number could change (for example, for applicants that might withdraw or were in the process of submitting their $5000 deposit when the system was taken offline). Many business (and their trademark counsel) are anxious to review the list of which .BRANDS and .GENERICS have been applied-for.

But, alas, it seems that nothing will be revealed anytime soon.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

The Batching Games: ICANN’s Plan to Process New gTLD Applications

The National Law Review recently published an article by Jamison B. Arterton of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding ICANN’s gTLD Applications process:

On March 29, 2012, the user registration window closed for anyone planning to apply for a new generic top level domain (gTLD).   Applicants who registered prior to March 29, 2012, however, still have until April 12, 2012 to complete their application.  As of March 25th, ICANN had 839 registered users in the system.  Given the number of registered users, ICANN has announced that if it receives significantly more than 500 applications, it will begin processing those applications in batches.  Under this “batching process,” applications will be divided into groups of 500 applications to be evaluated at a time.

If batching is required, applicants will need to obtain a time-stamp through the designation process that will begin after the April 12th close of the application submission period.   Applications will be batched and reviewed according to this time-stamp and not based on when the application was actually received.(gTLD).   Applicants who registered prior to March 29, 2012, however, still have until April 12, 2012 to complete their application.  As of March 25th, ICANN had 839 registered users in the system.  Given the number of registered users, ICANN has announced that if it receives significantly more than 500 applications, it will begin processing those applications in batches.  Under this “batching process,” applications will be divided into groups of 500 applications to be evaluated at a time.

Now for the fun part.  If the batching process is activated, applicants will be notified that they are required to select a future time target for the processing of their application.  On the date and time selected, the applicant must return to the online system and click “submit” as close as possible to the selected time as possible.  How close the applicant comes to the their target time will determine the applicant’s batch placement.  ICANN refers to this as “a game of digital archery.”  What fun!  All this for $185,000 filing fee.  Applicants who do not have a preference for when their application is processed can affirmatively opt-out of the process.

In the event that more than one applicant applies for a similar top-level domain, all applications for the contending strings will be placed into the earliest batch designated.  If batching is necessary, ICANN has indicated that it will post a video demonstration of the batching process after the close of the application process.  For now, additional information about the batching process can be found at ICANN’s website under “Batching Basics” (click here).

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

New Domain Name Registry Application Period Now Open Though Critics Urge Delay

An article by Kathleen E. Blouin, Lee J. Eulgen, Antony J. McShane, Katherine Dennis Nye and Sarah E. Smith of Neal, Gerber & Eisenberg LLP regarding Domain Name Applications was recently in The National Law Review:

On Thursday, Jan. 12, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) began accepting applications from private- and public-sector entities and organizations to obtain nearly any combination of words as their own generic top-level domain name (gTLD) registry. ICANN will only accept applications for new gTLD registries for a 90-day period, concluding on April 12, 2012. The plan will drastically increase the number of available gTLDs from the currently available 22 gTLDs (e.g., .com, .net. and .org) to potentially thousands of gTLDs (e.g., .clothing, .sports, or .yourbrand). With the opening of the application period, public and private sector outcry and dissent concerning the program has started to bubble up to mainstream consciousness.

In particular, the U.S. Department of Commerce has been reviewing the pending expansion after recently obtaining input from numerous sectors of industry regarding the potential shortcomings of the program. In November 2011, an alliance of 87 business groups, organizations and companies wrote a letter to Commerce Secretary John Bryson requesting that the Department urge ICANN to postpone the opening of the gTLD expansion application period. In light of record high levels of domain name dispute filings in 2010, the coalition believes that ICANN should delay implementing the expansion until it can confidently demonstrate that the plan will enhance consumer trust, boost Internet security, create economic benefits across many sectors and show that the benefits outweigh the costs of the expansion. The coalition is led by the Association of National Advertisers and the letter’s signatories include the Intellectual Property Owners Association and the American Intellectual Property Law Association.

In addition, last month, U.S. Representative Bob Goodlatte, Chairman of the House Judiciary Committee’s Subcommittee on Intellectual Property, Competition and the Internet, along with Representative Howard Berman, ranking member of the House Committee on Foreign Affairs, wrote to the Department of Commerce and expressed serious concerns about the dramatic expansion of gTLDs and urged the Department to encourage ICANN to undertake additional evaluation and review before initiating the robust expansion. They relayed concerns that brand owners will be forced to assume significant legal expenses to monitor and protect their trademarks and to obtain defensive registrations in light of an unprecedented number of new top-level domain names. The Representatives argued that consumers will be harmed as many of the legal expenses will be passed on to consumers in the form of higher prices. In addition, they are concerned that, as a result of the expansion, counterfeiting and piracy rates will continue to rise. They encouraged the Department of Commerce to delay the rollout until a sufficient analysis and evaluation is conducted, and until the Department is satisfied the benefits of the rollout exceed the costs and risks to consumers and businesses and to Internet safety and security.

Four commissioners of the Federal Trade Commission (FTC) also sent a letter to ICANN in December urging the delay of the expansion and voicing consumer protection concerns regarding the new gTLDs. The FTC reminded ICANN that ICANN planned to ensure that consumer protection and malicious abuse issues would be adequately addressed. The FTC is particularly worried that the rapid and large-scale expansion will lead to a significant rise in the use of false Whois (domain name ownership) information by domain name registrants, slowing down the FTC’s ability to identify and locate individuals behind fraudulent or counterfeit Web sites. The FTC has proposed a few immediate steps, including the implementation of a gTLD pilot program that would substantially reduce the number of gTLDs accepted in the first application round, and would require ICANN to hire additional compliance staff and impose registrant verification requirements.

Then three weeks ago, just before the Jan. 12 opening of the ICANN application process, a Commerce Department official, Lawrence Strickling, wrote to ICANN regarding some of these concerns. In his letter, Mr. Strickling recognized that the expansion has come after years of preparation and commentary from many stakeholders. However, Mr. Strickling stated that after meeting with industry stakeholders, there is tremendous concern about the expansion that could jeopardize its success. The Commerce Department requested that ICANN take three steps. First, develop a strategy to minimize defensive registrations so that a large number of organizations and entities, concerned about cybersquatting, do not feel forced to obtain defensive gTLD registries (e.g., .theirbrands) without any interest in actually operating a registry. Second, determine whether there is a need to phase in new gTLDs after the application window closes (on April 12th) and evaluate whether additional protection measures are necessary. And, third, better engage with and educate stakeholders as to the purpose and scope of the domain name expansion and available protective resources.

© 2012 Neal, Gerber & Eisenberg LLP.