Cybersquatting and the New Internet: What Designers Should Know About the New gTLDs

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The Internet is about to become a more colorful place, and more stylish and enticing than .biz, .tv or even .xxx ever dreamed of. New gTLDs are “generic top-level domains” that are scheduled to be released on the Internet in the third quarter of 2013. What does this mean? To start, ICANN (Internet Corporation for Assigned Names and Numbers), the U.S. non-profit that coordinates the technical aspects of the Internet, is currently reviewing nearly 2,000 new gTLD applications for extensions such as .music, .Nike, and .Africa. The Internet will also become increasingly multi-lingual because it opens up the gTLD system to non-Roman characters. The international community may soon encounter the .بيتك (Arabic for “home”) and .时尚 (Chinese for “fashion”) extensions. By way of comparison, there are currently only 22 gTLDs (e.g., .com, .org, .net, etc.), restricted to the Roman alphabet. You can browse the full list of pending applications on line.

What does this mean for the design community? We can likely expect to see the .design gTLD as well as a variety of design-related extensions including .architect, .art, .build, .fashion, .green, .home, .homegoods, .hotel, .kitchen, .lighting, .photo, .photography, and .style. Eight companies with competing visions have applied for control over the .design extension. One Japanese applicant aspires “to foster a sense of professionalism and trust among design customers.” Another Canadian applicant purports to create “‘focal points’ around 11 key disciplines of design…intended to be communities of interest and commerce.” While it is too early to say who ICANN will ultimately accredit to run these new gTLD registries or whether the competing applicants will reach some sort of joint-venture settlement, the online design community will, for better or for worse, be affected.

In one scenario, the chosen registry might encourage professional development by restricting who gets to use .design (e.g., www.JaneSmithArchitects.design) and implementing cyberbullying policies with “rapid takedown policies.” In another (albeit less idealistic) scenario, the registry might simply allow more of a free-for-all (e.g., www.JaneSmithXXX.design). As designers, the time is now to weigh in on the usage and delegation of the new gTLDs. If you feel strongly about how the new gTLDs should be delegated, or believe that an applied-for gTLD infringes your intellectual property rights, ask your lawyer about filing a formal objection with ICANN through January 2013. You can also participate in the public comment period which has been extended through September 26, 2012.

What does this mean for brand owners and the creative industries? On one end, so as not to miss out on extended branding opportunities worldwide, they should take the time and energy to rethink their marketing strategies. The new Internet is expected to provide multi-lingual portals for online content. By way of example, those expanding into the Japanese market might hypothetically add a local dimension to their brand by using the “.コム” extension (Japanese for “.com”). Brand owners should also consider acquiring the relevant second-level domains (e.g., www.brand.design, www.brand.sale, etc.) when the new gTLDs are released. Although the potential options may seem overwhelming, even a small operation or freelance artist should consider investing in the development of a new gTLD website(s) in order to take advantage of the new Internet. The benefits of having increased brand exposure and accessibility imaginably outweigh the minimal cost of registering a domain name and creating and maintaining a simple website. On the other hand, starting now, brand owners need to be aware of increased exposure to cybersquatters and be financially prepared to enforce their intellectual property rights. It might even be a worthwhile investment of brand owners to purchase important second-level domains as a defensive move right off the bat as well as to deposit their valuable trademarks into the Trademark Clearinghouse. Starting in October 2012, IBM and Deloitte should begin accepting applications from trademark owners for the Trademark Clearinghouse, which will issue Trademark Claims alerts of new gTLD applications that are identical to the deposited trademark at an anticipated cost of US$150 per mark (with considerably lower annual renewal fees). This means if someone applies for www.yourbrand.design, you will be notified and can timely file an objection before the domain is sold to a non-deserving party. However, the Trademark Clearinghouse will not detect if someone applies for a domain that is confusingly similar but not identical to a deposited trademark. Therefore, in order to know when someone applies for www.urbrand.design or www.yourbrands.design, you should consider relying on a separate domain name watch service from a provider such as the Watch Service offered by Ladas & Parry for monitoring these matters.

The new gTLD initiative, which also generated over US$350 million in application fees to ICANN, is big business for domain speculators. If you encounter problematic domain names in the new Internet, new solutions will be available. The proposed Uniform Rapid Suspension System (URS) is intended to offer complainants a relatively inexpensive and quick remedy at US$300-500 where the offending domain may be redirected to a generic landing page for the remainder of its registration period. The traditional methodologies for transferring or deleting domain names, through cease and desist letters and dispute resolution proceedings (e.g., UDRP), remain available but are more costly and time-intensive.

As the new Internet takes shape, the collective identity of the online design community will be refined (or at least redefined). Being aware of the new gTLDs is one step towards preparedness.

A version of this article was originally published by Core77.com.

 

Published In: Communications & Media Updates, Intellectual Property Updates, International Trade Updates, Science, Computers & Technology Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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