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BY: AMY G. MARINO
The Internet Corporation for Assigned Names and Numbers (ICANN) plans to accept new applications from January 12, 2012 to April 12, 2012 for
hundreds of new generic top-level domains (gTLDs, e.g., .com, .net,
.org), in the wake of recent urging from the Department of Commerce and
anxious brand owning stakeholders to reevaluate its plan and implement
measures to enhance consumer protection. When the application period
opens Jan. 12, entities that meet ICANN's background and technical
operations requirements (along with the $185,000 evaluation fee) may
apply to run their own registry. For example, applicants may apply for
new top-level domains containing a brand name or a generic term.
Many trademark owners question
whether they need to file defensive applications at the top-level even
though they may have no interest in operating a registry. ICANN advises
that, while operating a top-level domain registry offers exciting
opportunities and rewards, it carries significant risks and
responsibilities as well. Potential benefits include: the opportunity
to establish a new business around the TLD; increased control over the
rules and prices for registration of domain names under the TLD; ongoing
revenue streams for maintenance and renewals; marketing opportunities
to build better brand awareness; establishment of innovative business
models; and expanded geographic area, including use of languages
containing non-latin characters.
Some risks and responsibilities include: investment of not only the
$185,000 evaluation fee, but also ongoing registry operating costs;
potential loss of investment during the evaluation process in which
there is no guarantee that an applicant will get the new TLD;
significant contractual restrictions and obligations for running a TLD;
requirement for highly skilled technical operators; and lack of
applicable business models for guidance in this relatively new sector.
Even if they do not apply for a new
gTLD, trademark owners are advised to monitor the new applications for
TLD strings containing their generic industry term (e.g. .hotel or
.music), or their brand. In addition to traditional remedies under the
Uniform Domain Name Resolution Policy (UDRP) and other trademark laws,
ICANN will establish some new protection mechanisms against
cybersquatting and trademark abuse, including the following:
The new gTLDs could dramatically
change the scope of the Internet in the very near future. Although, the
expansion may become irrelevant due to search-based web navigation,
trademark owners should be wary of some potential short term
implications and take steps to protect against cybersquatting and
For more information about this topic, please contact Amy Marino, 757.473.5393 or email@example.com, or any member of the Williams Mullen Intellectual Property Team.
Please note: This
newsletter contains general, condensed summaries of actual legal
matters, statutes and opinions for information purposes. It is not meant
to be and should not be construed as legal advice. Readers with
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competent counsel. For more information, please visit our website at www.williamsmullen.com or contact Thomas F. Bergert, 434.951.5710 or firstname.lastname@example.org. For mailing list inquiries or to be removed from this mailing list, please contact Julie Layne at email@example.com or 804.420.6311.
© 2012 WILLIAMS MULLEN ALL RIGHTS RESERVED
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