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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 trademark abuse.
For more information about this topic, please contact Amy Marino, 757.473.5393 or amarino@williamsmullen.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 particular needs on specific issues should retain the services of competent counsel. For more information, please visit our website at www.williamsmullen.com or contact Thomas F. Bergert, 434.951.5710 or tbergert@williamsmullen.com. For mailing list inquiries or to be removed from this mailing list, please contact Julie Layne at jlayne@williamsmullen.com or 804.420.6311. © 2012 WILLIAMS MULLEN ALL RIGHTS RESERVED Disclaimer
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