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ANA Voices Opposition to ICANN’s Proposed New gTLD Program

If you have been reading LegalBytes, you already know that the International Corporation for Assigned Names and Numbers (ICANN) approved a plan to allow the proliferation of new generic top-level Internet domain names (Nightmare on Brand Street: ICANN Adopts Unlimited gTLDs). We hope you also know that a brief, executive-level presentation was made available entitled "The New gTLDs: What Does It Mean for Brand Owners?" that you can still download from "ICANN. You Can. We All Can: Own Your Own gTLD, Of Course!"

Well since then, all has not been quiet on the Western, Eastern, Northern or Southern Fronts, and today, in a letter to ICANN, the Association of National Advertisers ("ANA") detailed major flaws in the proposed ICANN program. You can read the ANA press release, as well as comments regarding ICANN’s administration of the root server system for the Internet that the ANA filed with the National Telecommunications & Information Administration (U.S. Department of Commerce).

Full disclosure: Rimon is representing the ANA in this initiative, with the support of other associations and organizations, to put ICANN on notice that the program will be economically disastrous and is unjustified by reports and experts relied upon by ICANN. The starting point for inquiring minds is the simple question: What problem or concern is this new program intended to address? The next question might be: At US$185,000 per application, plus additional annual fees, hosting or domain administration costs; dispute resolution expenses; and the added staff and monitoring (not to mention that companies will not simply abandon their existing domains (e.g., the dot com world); how can the Department of Commerce explain to small- to medium-sized businesses or start-up and emerging-growth companies that this additional cost is well worth it?

If you ask me, there is no shortage of questions, but an apparent paucity of answers. While there may be an emerging chorus of opposition, companies are already being forced to spend money hiring consultants, conducting analyses, commissioning internal task forces—all to study the impact, and determine if they should fight, apply or pursue any number of alternatives, in response to a program of questionable need and more questionable value. But then, that’s just my humble and slightly biased opinion.

So if you are stimulated to act or just to ask, you can contact any member of Rimon’s TLD Task Force: Doug Wood at +1 212-549-0377 or dwood@rimonlaw.com; Judy Harris at +1 202 414 9276 or jharris@rimonlaw.com; John Hines at +1 312 207 3876 or jhines@rimonlaw.com; Alex Klett (Germany) at +49 89 20304 179 or aklett@rimonlaw.com; Amy Mushahwar at +1 202 414 9295 or amushahwar@rimonlaw.com; Brad Newberg at +1 703 641 4272 or bnewberg@rimonlaw.com; Bo Phillips at +1 213 457 8311 or rphillips@rimonlaw.com; or Joe Rosenbaum at +1 212 702 1303 or joseph.rosenbaum@rimonlaw.com. 

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ICANN. You Can. We All Can: Own Your Own gTLD, Of Course!

A few days ago, Legal Bytes announced that the International Corporation for Assigned Names and Numbers (ICANN) approved a plan to allow virtually unlimited new top level Internet domain names – each is referred to as a gTLD (Nightmare on Brand Street: ICANN Adopts Unlimited gTLDs).

In response to numerous questions and requests for more information, here is some additional material for your consideration.

First, you can download a copy of the current gTLD Applicant Guidebook.

Second, you can read or download a copy of a brief, executive-level presentation entitled, “The New gTLDs: What Does It Mean for Brand Owners?” describing the changes, the implications and some additional information that may be relevant to brand owners in evaluating the implications of the new scheme.

As always, if you have further questions, you can contact me directly or any member of our gTLD team: Douglas J. Wood, John L. Hines, Joseph I. Rosenbaum, Cynthia O’Donoghue, Dr. Alexander R. Klett, LL.M., Steven J. Birt and Brad R. Newberg.

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Nightmare on Brand Street: ICANN Adopts Unlimited gTLDs

The International Corporation for Assigned Names and Numbers (ICANN) has approved the plan for unlimited new gTLDs (i.e., top level Internet domain names) and will soon start taking applications. Brand owners dreading the adoption of a system permitting unlimited gTLDs now face the reality of this dramatic change to the domain name system.

While the domain name system is currently limited to 22 “generic” gTLDs (.com, .org, .net, .info, .biz, etc.), country codes (e.g., .us, .uk, .cn), and certain special community-sponsored domains (e.g., the .xxx for adult entertainment), the new rules permit entities anywhere in the world to apply for and, if granted rights by ICANN, to operate a gTLD for virtually any term, word or phrase, including your names, trade names, trademark terms, brand and product names.

My partner, John L. Hines, has been following this occurrence and is about as close to these developments and their implications as any legal advisor can be; but we have a global team of lawyers – Douglas J. Wood, Cynthia O’Donoghue, Dr. Alexander R. Klett, LL.M., Steven J. Birt and Brad R. Newberg – who, with John, have put together a Client Alert entitled “.anything On Its Way: New Generic Top Level Domains Will Launch January 12”.

Of course, if you need additional information or guidance, or both, please contact any of them. They will be happy to help.

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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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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!