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Domain world set to explode, brand owners must pay attention says IP lawyer

June 7th, 2012 Comments off

Josh Jarvis, an associate with Foley Hoag LLP, who personally specializes in intellectual property matters and domain related issues such as UDRP’s, says that next week ICANN’s reveal day presents an early opportunity for various companies, organizations and brand owners to identify potential benefits and risks associated with the 1,900+ proposed new gTLD applications.

All companies should be actively planning to review the gTLD list upon publication to determine whether they should comment on, object to, or register second-level domains in one or more of the various new generic top level domains that we may see going live sometime in early 2013.

ICANN Big Reveal June 13th

Josh advises all brands to mark June 13th 2012 on their calendar and pay close attention to ICANN’s Big Reveal news conference in London: “Each brand owner should carefully review the published gTLD application list and identify the top-level domains in which it makes sense to register brands at the second level during the relevant sunrise periods, or afterward during the general registration periods.”

Some relevant questions for companies evaluating potential second-level registrations, according to Josh, include:

  • Is the gTLD in question related to our industry or industries, or represent a vertical or field to which we might expand in the future? Does this domain name represent a new business opportunity, or will it otherwise be actively used by the company?
  • Is the gTLD in question likely to be popular?
  • Is the brand we are considering registering at the second level famous or well-known such that registration by a third party is inevitable if we do not register it first? If so, it is likely to cause harm to the company or brand, or be a mere annoyance?
  • Is the brand in question owned by unrelated entities in foreign jurisdictions that would have equal claims to corresponding second-level domain names?
  • Is the company willing to bear the annual renewal cost for this and all other second-level registrations, especially if the registrations are purely “defensive” in nature?
  • Does registration of this second-level domain name otherwise make sense given the company’s overarching domain name acquisition and enforcement strategy?

Josh goes on to say: “Some of these questions may not have easy answers, but they can be helpful starting points to determining company- and brand-specific criteria for developing and refining second-level registration strategies within the new gTLDs.”

In his blog post titled The Impending Domain Name Explosion: Why Brand Owners Must Pay Attention on “Reveal Day” June 13 he also talks about risks at the top level, opportunities at the second level and availability of post-launch remedies for brand owners. Josh says everybody should keep an eye on things as they play out over ICANN. He wrapped up the post by saying:

“The initial gTLD application window has passed, but this first round of applications will be pending for many months before even a single new gTLD is “delegated” — entered into the domain system. In the meantime, the myriad forces involved in ICANN policymaking, including domain name registries and registrars, service providers, intellectual property owners, governments, and ICANN itself, will be working to clarify gTLD implementation issues that have yet to be finalized, improve gTLD program aspects that require retooling, and otherwise influence the New gTLD Program going forward.

While the majority of the New gTLD Program is not going to change at this point, at least for this initial round of applications, key changes — e.g., a revised URS — could affect trademarks owners’ approaches to domain name acquisition and enforcement strategy. Accordingly, it is imperative that all brand owners continue to pay close attention to these developments”

Joshua S. Jarvis is the editor of Foley Hoag’s Trademark & Copyright Law blog. You can read his full bio here.

 

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