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Intellectual Property

Starting an Online Business / CLE Webinar - ICANN's New Top-Level Domain Names Part 1: Concerns For Businesses

By Paul D. McGrady, Jr., Shareholder, Greenberg Traurig / Author, McGrady on Domain Names

One of the new topics that general counsel need especially to be aware of is ICANN's plan to launch new top-level domain names.  ICANN (Internet Corporation for Assigned Names and Numbers) is the outfit that runs the domain naming system and they are in the final stages of policy development to launch new extensions that will be in place of dot com.

Dot com's not going away - it's just a new opportunity for additional domain names. And some of those domain names will be brands because it's open to everybody, even brands.

So, for example there may be, in a few years from now, a "dot Coke" or a "dot Pepsi".  Companies will have important branding decisions that are going to affect marketing outcomes and all sorts of things. 

There are also very important legal consequences to all this because, essentially, your brand will be wrapped into a registry.  There will be ramifications in terms of having to deal with ICANN on branding and registry issues and also how you take your message in the new top level domain name to consumers.

There are some things to be concerned about.  The first thing is preclusion. ICANN is going to do round one.  And they say, a year after round one, they're going to try again with round two.  Of course, the last time they did a new top-level domain name round, it was seven or eight years between that one and the new one.  And so, since ICANN is not known for their speed at moving things forward, I don't think anybody can really count on that one year window at getting a second chance.

The other thing to be concerned about is that they're not going to allow top-level domain names that are confusingly similar to each other.  So, if you have a brand that's very close to somebody else's brand, even though, in your mind, the brand names are distinct, ICANN's examination experts may not find them to be very unique from each other.  So, for example, UPS and UBS are quite close and it's not very clear at this stage whether or not the ICANN examiners are going to allow those two marks to co-exist in a top level domain name.

If you share a trademark, it's especially something to be concerned about.  A good example of two great companies that share a mark in this country is Delta faucets and Delta airlines.  In that situation, there can only be one dot Delta.  And so those companies have questions even before the application process starts about how do we work out co-existence, how do we do those things to make sure that everybody continues to get along and not step on each other's toes.

To learn more, join me for a complimentary CLE Credited LexisNexis® Webinar: Starting an Online Business - Best Practices, on June 14, 2011, at 2 p.m. Eastern time. To learn more about the webinar or register, click here subscribers can search McGrady on Domain Names 

Non-subscribers can purchase McGrady on Domain Names at the LexisNexis Bookstore.


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