The Internet: Bigger and Even More Complex

by Ladas & Parry LLP

The Internet is about to become a much bigger and more complex place for trademark owners.

The Internet Corporation for Assigned Names and Numbers (“ICANN”) will soon be allowing organizations to introduce hundreds of new generic Top Level Domains (gTLDs) to the internet, adding to the existing 22 such as .com, .org, and .net.

Those seeking to create a new gTLD and who previously registered with ICANN must complete their applications by April 12, 2012. ICANN hopes to announce the list of new gTLD applications, estimated at between 1000 and 2000 new gTLDs, on April 30, 2012 and hopes to begin delegating successful new gTLDs by the end of the year.

Trademark owners, whether or not they are applying for their own .brand gTLD, will be adversely impacted by this development and need to prepare. Ladas & Parry, and our affiliated domain name registrar LadasDomains, are ready to assist.

Trademark owners should be ready to take the following steps to protect themselves:

1) review the list of new gTLD applications when it is published,

     (a) As a courtesy to our existing trademark watch clients, we will be sending a special notice comparing any of their marks currently on our international trademark watch service with the list of new gTLD applications to identify potential conflicts;

     (b) We will be alerting our clients when the list is published, encouraging them to review the list to identify:

          (i) new gTLD strings that could conflict with their trademark rights;
          (ii) industry .keyword applications that may adversely impact their industry, for example, if someone is trying to register .toys and they are a toymaker;
          (iii) new gTLDs that may be relevant to their business or be a significant source of cyber squatting, for example an ecologically minded company may wish to register its brands in .eco whereas an established musical group may be concerned that someone may grab their name in .music;
          (iv) strings applied for by their competitors.

2) participate in the gTLD objection process if you believe a new gTLD string will conflict with your trademark rights (for example you own BUDWEISER and BUD and someone else is applying for .bud), including:

     (a) the string confusion objection process, reserved for gTLD applicants to object to similar applications of other gTLD applicants;
     (b) the legal rights objection process, designed for trademark owners to object to gTLD applications that conflict with their rights;
     (c) the community objection process, designed to object to applications for "community" tlds that may not have the support of the relevant community.

3) identify your primary marks and register them in the Trademark Clearinghouse so you can be alerted to identical new domain registrations in the new gTLDs and so you can participate in the initial Sunrise registration periods of relevant new gTLDs at the appropriate time (we will provide more information about the Trademark Clearinghouse and sunrise periods in the future as more details are made available);

4) identify new gTLDs that are relevant to your industry and brands, refine your defensive domain registration policies and participate in the sunrise registration periods and initial open registration periods where appropriate;

5) enroll your important marks in Ladas & Parry’s domain name watch service which will monitor new domain names in the new gTLDs as they become registered;

As part of this process, we strongly encourage our clients to review their existing domain name portfolios, registration policies and enforcement policies and we are pleased and available to assist.

We will continue to provide updates during this process as dates become more critical and as more information is available. Meanwhile, should you have any questions or wish to discuss your particular situation, please contact us.

Upcoming Dates:

April 12, 2012 - Last day to complete new gTLD applications

April 30, 2012 - REVEAL DAY - Anticipated release date of list of new gTLD applications

From May 1, 2012 for approximately 7 months - Formal objections can be filed against any new gTLD applications based on legal objections, string confusion, community objections and public interest grounds

September/October 2012 – Anticipated publication of Trademark Clearinghouse procedures, rules and regulations


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.

© Ladas & Parry LLP | Attorney Advertising

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