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What’s in a (Domain) Name? ICANN by any other name would still…

On June 13, the Internet Corporation for Assigned Names and Numbers (ICANN) revealed the list of applications for new gTLDs to be launched as part of its proposed expansion of the top-level domain space. A total of 1,930 applications were filed for strings, including brand names, generic words and abbreviations, geographic terms, and non-ASCII strings (such as Chinese or Arabic). If this is allowed to move forward as it is currently envisaged, it will be a striking change to the domain name system, with dramatic new risks and evolving threats, as well as opportunities. Brand owners – applicants or not – need to strategize and prepare now, to protect their marks and brands. Some may also need to decide whether or not to challenge any pending applications. 

Rimon has assembled a global team of thought-leaders to counsel and guide you. Experienced lawyers who have been following and assisting for years – ever since the proposal was first announced. Rimon is now offering a teleseminar intended to cover:

  • How to develop a strategy to protect your rights – marks and brands
  • What brand owners should be thinking about now
  • Commenting on and objecting to applications
  • The Trademark Clearinghouse and other supposed protections in the new system
  • Updates on industry, governmental and regulatory efforts to provide more protection for brands and trademark owners

You can register through the link here: The gTLD Applications Have Been Revealed: What Brand Owners Must Know Going Forward.

As always, if you need legal or regulatory counsel, call me, Joseph I. (“Joe”) Rosenbaum, or any of the lawyers highlighted in the full Client Alert or, of course, the Rimon lawyer with whom you regularly work.

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Annual Registrar Summit – Take the Fifth (Amendment or Bourbon – What’s In A Name?)

Just last Thursday, I had the joy of attending and presenting at the Fifth Annual Registrar Summit (2012) sponsored by GoDaddy.com. A great group of people gathered to discuss the current state of domain name registration. Kicked off by a terrific “how to properly hold a meeting of competitors without running afoul of anti-trust and competition laws” presentation by Chris Compton, the topics ranged from what ICANN is up to these days, to discussions of authentication, security, phishing, malware and what the domain name registration community is trying to do about it.

As I always attempt to do, when permitted, I post a PDF version of my presentation for all to read, and, if you choose, to download a personal copy in PDF form. So, without further ado – feel free to browse through “What’s in a Domain Name? Registration by Any Other Name Would Still Create Legal Issues (subtitled “Clouds, Mobile & Internet Domains – What Me Worry?” [PDF] (The embedded videos have file sizes that are too large to include – so next time show up in the audience and you’ll see them.)

If you want to know more about anything covered in the presentation, or if you need counsel or help navigating the legal issues, feel free to call me, Joseph I. (“Joe”) Rosenbaum, or any of the Rimon lawyers with whom you regularly work.

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Domain Names Grow Complex and Pricier on the Information Superhighway

As we reported last in previous issues of Legal Bytes, the Internet Corporation for Assigned Names and Numbers (ICANN) is preparing to open up the generic top level domain space to virtually any string of letters. The 21 existing generic top level domains (gTLD) include .com, .net, .org, .edu, .info and 16 others.

What Does This Means To Your Domains?   Under the proposal, brand owners will be able to apply for gTLDs corresponding to their brands, and entities representing communities, or wishing to organize a community or common interest channel, will be able to apply for names representing those various interests (e.g., .bank, .medicine, .law, .baseball, etc.).

Why Should I Care? These new domains might be used in many ways, but be prepared for steep costs. If someone wants to buy a new top level domain (and, in effect, act as the registry for the purchase or distribution of second level domains), it can be very expensive – $185,000 plus $25,000 per year, plus other fees and costs associated with the processing of the application. . .   and the IP stakes involved in this proposal are high. The comments submitted to ICANN on its First Draft Proposal from about 300 corporations, associations, governmental agencies and individuals worldwide, were largely negative and reflected serious concerns about trademark rights, increased cybersquatting, monitoring costs, defensive registrations and the like. Many complained of the steep toll these costs already take over the 21 existing domains and painted a gloomy choice under the new proposal: increase expenditures on trademark defense over potentially hundreds of new domain channels, or refuse to make the expenditure and potentially jeopardize the strength of a brand.

What You Can Do? Applications will likely not be accepted until, at the earliest, December or the first quarter of 2010, so this is your opportunity to make your concerns known. In the meantime, ICANN submitted its Second Draft Guidebook that purports to address some of the concerns raised by the comments and at least pays lip service to giving further consideration to the trademark questions. Comments on the Second Draft Guidebook are due April 13. ICANN is also soliciting comments on recent related studies and is preparing to issue a report addressing trademark considerations later in April. We know the issues involved and are familiar with this process. We represented the Association of National Advertisers (ANA), the advertising industry’s largest trade association, in connection with its submission to ICANN regarding the First Draft Guidebook, and we are working with the ANA on formulating its position on the second draft. You can click on the highlighted links to read the ANA’s submission to ICANN on the First Draft Guidebook, and an updated Client Alert on this topic. If you are interested in submitting your comments and would like us to assist you, I strongly encourage you to contact John Hines.

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Objects in the Mirror Are Closer Than They Appear

Who would have thought that would refer to our financial system, real estate markets, building developers, technology providers and, lest we forget, automobile manufacturers. This was a year of challenge and change. America elected its first Afro-American President, who inherits a country involved in wars, economic turmoil of unprecedented proportions and a government tab increased by $1 trillion in the past 90 days. The NY Giants won the Super Bowl (and may do it again). The price of gasoline went from $2 a gallon to more than $4 a gallon to less than $1.50 a gallon this year, and the stock market experienced unprecedented swings, some days approaching 1,000 points; and fluctuations of anywhere from 200 to 600 points stopped being unusual—sometimes in the same day! No laughing matter, the Federal Reserve was doling out discount coupons for the purchase of investment banks, banks were buying brokerage houses, and non-banks were lining up to become regulated banks, just so they could share in the bail out fund. Indeed, the term “bail out,” once the domain of skydivers and sinking rowboats, became the most over-used word in the news (and in Congress). Speaking of domains, ICANN turned the world of domain names on its ear with its proposed Draft Applicant Guidebook (Legal Bytes; November 2008). Cyberwarfare no longer remained the domain of motion pictures like “War Games,” “Terminator” and “Matrix” when Georgian websites were under attack while Russians soldiers invaded the real Georgian sites. And speaking of Georgia, a court in the other state of Georgia upheld the validity of promotions held via SMS text messaging. Virtual worlds were in the news: divorces, theft of intellectual property, defamation, performance rights, even the murder of an avatar resulted in an arrest. “Green,” behavioral and children’s marketing, blogs, word of mouth and viral marketing occupied much of the discussion at the FTC; identity theft and data breaches continue to create privacy concerns; ad-blocking technology mounted an assault on interactive advertising; testimonials and endorsements created buzz, as did publicity rights, led by the estate of Marilyn Monroe (Legal Bytes; May 2008); a New York court decided that emails could amend a contract because they are “writings”; and the online, interactive video gaming industry, wireless advertising and content distribution, and the rise of processing platforms that serve as home computers, entertainment centers, Internet access and gaming portals—oh, and some are handheld and wireless. The fact that 2008 marked the 40th anniversary of the conception of the x86 device and the beginning of what we now know as personal computing—spawned by the obsession of a San Antonio engineer named Austin O. “Gus” Roche—and the 10th anniversary of the publication of my law journal article “Privacy on the Internet: Whose Information Is It Anyway?” went pretty much unnoticed.

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WWW.IMaySoonBeLegal BytesWithoutAnyDotCom

Move over “Dot Com” and other “dots” you have come to know and adore. Soon you may be able to purchase a top-level domain corresponding to almost any word or phrase, including your name or brand. ICANN, which administers domain names, is accepting comments on its new Draft Applicant Guidebook; but if you really want expert guidance and advice on what this means to you and why you should prepare yourself for the changes, read our bulletin Branded Dot Com Internet Domain Names, and then contact John Hines, our resident authority Advertising Technology & Media Law partner. Dot’s nice!