Tag: ICANN

Protect Your Trademark Online: Global Trademark Clearinghouse to Begin Accepting Submissions

The National Law Review recently published an article by Karen Artz Ash, Bret J. Danow, Roger P. Furey, Doron S. Goldstein, Peter J. Riebling, and David B. Sherman of Katten Muchin Rosenman LLP regarding Trademarks and the Global Clearinghouse:

Katten Muchin

 

On March 26, 2013, the Internet Corporation for Assigned Names and Numbers (ICANN) will begin to allow trademark owners to submit their marks for inclusion in a newly created Trademark Clearinghouse, which is intended to serve as a single centralized database of verified information that will enable trademark holders throughout the world to better protect their rights on the Internet. This follow-up to “New Generic Top-Level Domain Names: What Brand Owners Need to Know” (June 15, 2012) introduces brand owners (and their licensees, assignees and agents) to several key elements of the Trademark Clearinghouse submission process, and describes the primary benefits that the Trademark Clearinghouse promises to provide to trademark rights holders.

Background

ICANN, the private nonprofit corporation that manages most top-level domains (TLDs) and IP addresses, developed the Trademark Clearinghouse (in connection with Deloitte and IBM) as part of its new generic Top-Level Domain (New gTLD) Program. Generally speaking, the New gTLD Program allows any legal entity to file an application to create a new gTLD—the general domain name address extensions that come after the last dot (such as .com, .net., .org)—and, as a result, has the potential to significantly expand the existing Internet infrastructure by increasing the number of gTLDs to an almost unlimited amount (and simultaneously expanding the potential for online trademark infringement). Amid this expansion, the Trademark Clearinghouse was created to protect trademark rights holders by permitting them to more easily register second-level domain names under new gTLDs (e.g., YOURNAME.example), and to allow gTLD operators and registries to better review and assess trademark claims.

The Submission Process

The Trademark Clearinghouse will initially accept and verify for registration (1) nationally or regionally (i.e., multi-nationally) registered trademarks; (2) court-validated marks; and (3) marks protected by statute or treaty. Trademarks that are the subjects of pending applications or are inactive or invalid may not be registered.

Although the specific type of information and documentation required to verify a trademark record will vary depending on the type of mark, the Trademark Clearinghouse will generally require trademark rights holders to submit information regarding the mark itself, details about any applicable registration, court reference numbers or other documentation evidencing rights, the goods and/or services covered and the corresponding Nice classification(s), the country(ies) in which the mark is protected, the name and contact information of the trademark rights holder, and, for purposes of obtaining applicable Sunrise Services, certain verification of proof of use of the mark, which may include a signed declaration and specimen(s) of trademark use (e.g., labels, tags, containers, advertising and marketing materials). All trademark submissions will be subject to verification by Deloitte Enterprise Risk Services.

This verified trademark data will support the two primary benefits that the Trademark Clearinghouse promises to provide to trademark rights holders: Sunrise Services and “Trademark Claims” for all new gTLDs. The cost charged by ICANN for making a submission to the Trademark Clearinghouse will vary from US$95 to US$150 per year for a single mark, with discounted fees available to trademark rights holders who seek registration for three years (US$435) or five years (US$725). The Trademark Clearinghouse’s submission guidelines and basic fee structure are available for download at its official website.

Sunrise Services

By registering a trademark with the Trademark Clearinghouse, a trademark rights holder will be permitted to register second-level domain names under new gTLDs (e.g., YOURNAME.example) during a “Sunrise” period of at least thirty (30) days before registration of such names is made available to the general public. All new gTLD applicants are subject to this mandatory “Sunrise” period after the registration of the new gTLD with a registry. Access to “Sunrise” registration will provide trademark rights holders with a relatively low-cost means by which to obtain some level of control of, and some ability to safeguard, second-level domain names comprised of their trademarks.

Trademark Claims

Registering a trademark with the Trademark Clearinghouse will also entitle a rights holder to a “Trademark Claims” service following the “Sunrise” period. This “Trademark Claims” service will extend for at least the first sixty (60) days after a new gTLD is open for registration with the general public. At the outset, the “Trademark Claims” service will provide a warning of potential infringement to any third party attempting to register a domain name that matches a trademark registered with the Trademark Clearinghouse. In the event that the third party proceeds to register the domain name despite such a notice, the “Trademark Claims” service would send an automated notification to the trademark holder alerting it to the potential infringement. Although the Trademark Clearinghouse will not bar registration of the potentially infringing domain name, the “Trademark Claims” notice will expeditiously inform the rights holder and enable it to consider whether to take action.

As a practical matter, the “Trademark Claims” service will only identify identical matches to eligible trademarks. In other words, “Trademark Claims” notices will only be generated if the domain name label consists of the complete and identical textual elements of the trademark registered with the Trademark Clearinghouse. As a result, even a domain name containing a plural version of the mark would not be considered an identical match. Typos and “trademark + generic term” domain name labels also would not be considered identical matches. To the extent a trademark contains any special character that cannot be represented in a domain name, e.g., “@” or “!,” such character may be either omitted, replaced by hyphens, or spelled out with appropriate words of the official language(s) of the country/jurisdiction in which the mark is protected. Accordingly, if a trademark rights holder is interested in obtaining additional protection against the use and registration of infringing domain names, it may wish to work with legal counsel and use a private domain name watching service.

Conclusion

The launch of the Trademark Clearinghouse marks a phase of ICANN’s New gTLD Program that would appear to be particularly significant to brand owners and licensees. In view of the numerous ways in which the New gTLD Program promises to alter the existing Internet infrastructure, trademark rights holders may wish to consider the benefits of early registration with the Trademark Clearinghouse and work with counsel to develop other cost-effective strategies to protect their trademarks and other valuable intellectual property rights.

©2013 Katten Muchin Rosenman LLP

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.

The DotCom Shake-Up: How Will You Protect Your Rights in the New Imminent Domain Name Release?

Barnes & Thornburg LLP‘s Internet and Technology Group recently had an article, The DotCom Shake-Up: How Will You Protect Your Rights in the New Imminent Domain Name Release?, featured in The National Law Review:

The Internet Corporation for Assigned Names and Numbers, often referred to as ICANN, has now released its list of 1,930 applications for proposed new generic Top-Level Domain Names (“New gTLDs”). A list of the New gTLDs and the respective applicants is available here.Much speculation has been made about how these New gTLDs, if successful, will impact the Internet. Brand owners and others are advised to be diligent in preventing others from securing any New gTLDs that may adversely affect their rights.

As expected, many of the applications seek registration of New gTLDs that correspond with generic terms such as .business, .city, .computer and .beer. Still, numerous other applications include domains that correspond with brand names, such as .google, .hbo, and .ferrari.  In many cases, more than one applicant has sought registration of the same New gTLD. Additionally, some of the New gTLDs requested, undoubtedly correspond with trademarks belonging to others.

To address potential disputes over New gTLD applications, ICANN offers several types of pre-delegation dispute resolution procedures to address objections to registration, including:

  1. Legal Rights Objections;
  2. Community Objections;
  3. String Confusion Objections (objections based on confusing similarity to existing top level domains such as .com or .info); and
  4. Limited Public Interest Objections (for example, objections based on human or civil rights); and
  5. Intergovernmental Organization objections

Prior to ICANN’s approval of a New gTLD, third parties will have an opportunity to file a formal objection to a proposed application on the above-stated grounds. Currently, the objection filing window is anticipated to be seven months, from June 13, 2012 to Jan. 13, 2013.

Most objections will likely consist of Legal Rights Objections and Community Objections.

Legal Rights Objections

Brand owners are strongly encouraged to review the list of New gTLD applications to help identify potential legal rights violations.  If a potential violation is identified, brand owners can initiate an arbitration proceeding requesting that an independent panel determine whether an applicant’s potential use of the applied-for New gTLD would be likely to infringe the brand owner’s trademark rights.  To address any such concerns, brand owners may seek to prevent the registration of applied for gTLDs that:

(i)  take unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark;

(ii)  unjustifiably impair the distinctive character or the reputation of the objector’s mark; or

(iii) otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark.

Community Objections

Established institutions that are associated with clearly delineated community may also have a basis to object to New gTLD applications.  To prevail, an objector must demonstrate there is a substantial opposition to registration of that New gTLD by the community and that the use of the New gTLD will cause a material detriment to the rights or legitimate interests of its associated community and the broader Internet community.

© 2012 BARNES & THORNBURG LLP

Has Someone Applied to Register Your .BRAND? Top Five Things You Need to Know

The National Law Review recently published an article by Geri L. Haight of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding The Registration of Brands:

You’ve heard about the planned expansion of the domain name system, but what does it really mean for trademark owners?

Last year, the Internet Committee for Assigned Names and Numbers (ICANN), the organization responsible for the coordination of the global Internet domain name system, announced a plan to bring sweeping changes to the Internet’s generic top level domain (gTLD) structure. Internet users are familiar with gTLDs, if not by name. gTLDs are Internet extensions such as .com, .org and .net found at the end of a domain name. Under the new system, a business could apply to own its .BRAND. An automobile company could apply to own .CARS. A city government could apply to own .CITY. The possibilities, seemingly, are endless.

ICANN received 1900 applications for new gTLDs during the first application period, which is now closed. Google announced last week that it had applied for the gTLDs .GOOGLE, .YOUTUBE and .LOL among others. Canon Inc. announced that it has applied for the gTLD .CANON in order to “increase the convenience and effectiveness of its online communications.” The domain name registry Donuts Inc. announced that it has applied for 307 new gTLDs. The timeframe and process for reviewing the applications are somewhat fluid but the first new batch of gTLDs is slated to become active in early 2013. The remaining batch of applied-for gTLDs will not go live until 2014 or later. So what should trademark owners do now to prepare for the new regime?

1. Review and Analyze the List of Applied-For gTLDs

In what ICANN calls “Reveal Day,” on Wednesday, June 13, 2012, ICANN will publicly post a listing of all applied-for gTLD character strings. This will be the first public glimpse into which entities have applied to own which new gTLDs. Although some companies have announced publicly that they have submitted applications to participate in the new gTLD program, most have remained silent throughout the initial application phase. But all will be revealed on Reveal Day. Trademark owners should carefully review the list of applied-for gTLDs in order to determine if any conflict with pre-existing trademark rights. But remember, the list of applied-for gTLDs have not been approved by ICANN yet. There is time to take action if necessary to protect your trademark rights.

2. Submit a Comment to ICANN

What can you do if you learn on Reveal Day that someone has applied to register your .BRAND? Following publication on Reveal Day, interested parties may submit comments related to proposed new gTLDs to ICANN for consideration by the independent evaluators assessing each application. During the comment period, trademark owners can submit comments regarding potential trademark infringement, dilution, and related concerns raised by particular applications for gTLDs. Application comments received within 60 days of Reveal Day, i.e., by August 12th, will be available to the evaluation panel performing the initial evaluation reviews of all pending applications. Initial evaluation of the applications is expected to begin in early July.

3. Use Dispute Resolution Procedures to Object to Infringing gTLDs and/or Domain Names

Separate from the comment procedure, and prior to the approval of an applied-for gTLD, a formal objection process will be available to trademark owners. ICANN has appointed the World Intellectual Property Organization (WIPO) to be the exclusive provider of dispute resolution services when a third party files a formal “Legal Rights Objection” (LRO) to a pending application. A Legal Rights Objection can be filed where the applied-for gTLD (i) takes unfair advantage of the unique character or the reputation of the objector’s registered or unregistered trademark, intergovernmental organization (IGO) name or acronym, or (ii) without justification, the gTLD impairs the distinctive character or the reputation of the objector’s mark, IGO name or acronym, or (iii) creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark, IGO name or acronym. The LRO process offers a good option for trademark owners who believe that their trademark rights may be encroached upon by a particular applied-for gTLD. But the process comes with a price tag of $10,000 fee for arbitration of a LRO by a single-member panel. The applicant of the challenged gTLD similarly is required to pay a $10,000 fee. If the applicant fails to do so, the objection will be deemed successful. The sole remedies available for a LRO are the success or dismissal of the objection. Monetary damages are not available through this process.

Many anticipate that the problem of “cybersquatting” will dramatically increase with the expansion of the gTLD system. Cybersquatting refers to the bad faith registration of a domain name that contains another’s brand or trademark. If an applied-for gTLD is approved by ICANN and domain names registered using the new gTLD infringe upon your trademark rights, the Uniform Domain Name Dispute Resolution Policy (UDRP) remains available to resolve domain name disputes. Under the UDRP, domain name disputes are typically resolved in approximately 45-60 days and the associated filing fees are relatively low (approximately $1500 to resolve a dispute involving up to 5 domain names). WIPO has stated that the UDRP is “the only proven mechanism in place to absorb the impact of gTLD expansion.”

Another alternative currently contemplated by ICANN is the Uniform Rapid Suspension System (URS). The URS is intended to be a faster, more cost-efficient complement to the UDRP. It is intended for cases of trademark abuse. Unlike the UDRP, which allows a trademark owner to obtain the transfer of a domain name that impairs its trademark rights, the sole remedy available under the URS is the temporary suspension of a domain name for the duration of the registration period (which may be extended for one year). While the URS substantive criteria mirror that of the UDRP, there is a higher burden of proof for complainants. ICANN has not yet selected a vendor for the URS System.

4. Register Your Trademark With ICANN’s Trademark Clearinghouse

In connection with the launch of new gTLDs, ICANN plans to form a Trademark Clearinghouse. The Trademark Clearinghouse is intended to serve as a single database of authenticated, registered trademarks and will eliminate the need for trademark holders to register their marks in many different databases as new gTLDs are introduced. ICANN will require every new gTLD operator to utilize the Clearinghouse, which will be available globally and have the capabilities for validating trademark data from multiple global regions. As a result of these functions, the Trademark Clearinghouse is expected to play an important role in ensuring ongoing protection of trademark rights under the new scheme. If you are a trademark owner and have not applied to register a gTLD, registering your trademark with the Trademark Clearinghouse is an important step in protecting your trademark rights in the new gTLD world. The fee for initial trademark authentication and validation services is expected to be less than $150 US per submission/trademark.

Trademark owners who lodge their marks with the Clearinghouse will obtain certain advantages and notifications during “sunrise” periods that will apply to registrations of second-level (to the left of the “dot,” such as “secondlevel” in secondlevel.BRAND) domain names within newly launched gTLDs. In addition, registrants of second-level domain names will receive (at least for some period of time) notifications of trademarks that are an identical match to their newly registered domain names. Second-level domain name registrants, though, are not prevented from registering the sought-after domain name based on registration of a trademark with the Clearinghouse. They are simply put on notice that the domain name may conflict with another’s trademark rights. Importantly, notice to domain name registrants will not be provided except where the match with a trademark is identical. So, if the second-level domain name contains a misspelling of a trademark, no notification will be given to the registrant.

5. Apply to Register Your Trademarks and Service Marks

Having federally-registered trademark rights will offer valuable protection as the new domain name system becomes a reality. To the extent that you are using or plan to use a trademark or service mark in connection with the offering of goods or services and have not yet applied for federal trademark protection, you should consider doing so now. A federal trademark registration provides many valuable benefits. To start, it provides the owner with rights on a national (as opposed to a regional) level. A federal registration also provides you with the exclusive right to use the mark on or in connection with the goods or services listed in your registration. In connection with the new gTLD system, a federal trademark registration will help to strengthen and reinforce your trademark rights. It will also establish ownership of a particular trademark and, therefore, standing, to submit a legal right objection or other challenge to an applied-for gTLD or second-level domain name.

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

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.

Protecting Your Brand in the New .XXX Top-Level Domain

Recently posted in the National Law Review an article written by atttorneys  Lee J. Eulgen, Antony J. McShane and Katherine Dennis Nye of Neal, Gerber & Eisenberg LLP regarding  ICANN’s established procedures for the use of .XXX as a new top-level domain :

 

The Internet Corporation for Assigned Names and Numbers (ICANN) recently established procedures for the use of .XXX as a new top-level domain (TLD) like .COM, .NET, and .ORG. However, unlike those other TLDs, .XXX has been designed to clearly signal adult content on the Internet. Given the connection between .XXX and adult content, many brand owners outside the adult industry have reasonable concerns about protecting their name and brand from use with the .XXX TLD.

In part to allay some of these fears, the company behind .XXX, ICM Registry, has created a sunrise period, which has just opened, to help protect brand owners from the use of their trademarks with the .XXX TLD. Between Sept. 7 and Oct. 28, 2011, trademark owners that are not in the adult industry can “reserve” their trademark for a one-time fee of approximately $250. For example, if the fictional ABC Company owns a U.S. federal trademark registration covering the mark ABC, it could reserve www.abc.xxx so that no one else can register or use that domain name for at least the next 10 years.

One important exception to the reservation process is that if two trademark owners both own the same mark, the one that wants to actually register and use the .XXX domain will prevail over the one that simply wants to reserve the same domain. For example, assume the fictional Acme Adult Magazine and Acme Family Restaurant both own U.S. federal trademark registrations for the mark ACME. If the restaurant applies to reserve www.acme.xxx and the magazine applies to register the same domain, ICM Registry will permit the magazine to register and use the domain, and the restaurant will lose its reservation fee.

Failure to reserve important trademarks during this sunrise period could have serious consequences. Most fundamentally, failure to reserve .XXX domain names corresponding to your trademarks could of course lead to undesirable usage of your marks in connection with domain names corresponding to adult web sites. Although brand owners may be able to recover .XXX domain names from others who register and use those domains in bad faith – just as brand owners can in domain name disputes over .COM or .ORG domains – the damage to a brand may be greater from misuse of a trademark in connection with the .XXX TLD by an adult content site than from misuse with another TLD. Furthermore, regardless of what TLD is at issue, the process of forcibly obtaining a domain name through legal means can be expensive. Thus, trademark owners should consider carefully whether reserving their marks during the .XXX sunrise period makes sense for their brands. 

© 2011 Neal, Gerber & Eisenberg LLP.