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Intellectual Property

Starting an Online Business / CLE Webinar - ICANN's New Top-Level Domain Names Part 3: Will the New Top-Level Domain Names Result in a Horse Race To Get There First?

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

Well, there's not going to be a horse race because there's a three-month application window and there is, at least the way the applicant guide book is written today, no benefit to being the first application in.  You just have to have it in within the window.  So if there are two applications for identical marks or for confusingly similar marks, they will go into what's called a "contention set".   Any domain names that are confusingly similar to them will unfortunately be held up while that contention is resolved.  Ultimately if the contention can't be resolved, then it will go to auction.  And so whoever wants the top level domain name the most will have to pay ICANN quite a bit of money to outbid the other guy. 

There's also this issue of the community application.  If someone has a community that they believe that they represent, they can also file for a corresponding top level domain name.  Even if it is a brand, if they qualify in a community analysis, their application can actually trump a brand. 

So say for example, somebody puts together a community of people who live in the Mississippi Delta and they want to be "dot-Delta".  If they're able to convince ICANN that they in fact represent a community that can be identified, that the overwhelming majority of the community believes they represent them and they back the application, they can in fact be in a trump position in relationship to the other applications. 

I use the "dot-Delta" example as a community application sort of facetiously as there is no Delta community that I know of. But it's an example of a problem that may occur depending on the nature of your mark.  I expect of the entire process, because of the trump position, there will be gaming at the community-based application level.

So there are some nuances to all this; it's not just first to file.  And there are some things that need to be done on the front end.  So for example, how do you set up the company?  Who will serve as the registry is important because if there's no way to make that a joint venture, if there's no stock sharing, and there's no ability to bring somebody in who otherwise will be locked into an auction with you, then you're in a situation where someone has to lose and someone has to win.

But if there's a way to use that company structure to make a friend, and everybody can share a top level domain name, you can delineate what you want at the second level -  that area on the left hand side of the dot.  For example, one party will register "" and the other registers "".  If you can do those things and work out happy compromises then great.  But if you don't do the correct planning up front it's going to be harder to get there in the event both applications go in.

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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