Generic top-level domain names (“gTLDs”) consist of the web addresses that typically end in .com, .net, .org and the like. The organization that oversees these web addresses is called The Internet Corporate Asociation for Assigned Names and Numbers (ICANN), and when it started in 1998 there were only eight possible dot-somethings a web site could end with.
In 2004, additional gTLDs were added, and around this time there was a greater expansion and use of country code top-level domains like .cn (China), .uk, (United Kingdom) and .ru (Russia). Securing domain names in these well-defined parameters became big business, with brands vying to own the most relevant domain name to their products, and in some cases, paying big money for them.
Get Ready to Say Hello to Dot Everything!
In June 2008 ICANN voted unanimously to modify the domain name system allowing for an unlimited number top-level domain names. To web users this means that you may find your self visiting www.basketball.nike to buy shoes or www.cellphone.att to pay your wireless bill. According to John McKeown’s article in The Lawyers Weekly (March 11, 2011) ICANN’s optimism about these changes is fueled by their belief that they will “create more choice for Internet users, empower innovation, stimulate economic activity and generate new business opportunities around the world.” Brand owners, however, see a much more expensive effect, that being the need to “obtain registration for defensive purposes and incur expenses to monitor a significantly increased number of potential abuses.”
Much has been written both for and against these changes. There are over 115 gTLD proposals that might be made in 2011 alone, and with ICANN evaluation fees starting at $185,000 brand owners can expect to spend a pretty penny making sure their brands stay clear on the web.
We are proud to offer a two-week, online themed event all about the new gTLD changes, with lots of resources to view and download. Click here to visit our event page.
What Does a Change to gTLDs Mean for Lawyers and Their Clients?
Rather than answer that question here, let’s leave it to the experts. We interviewed two of them for this week’s martindale.com Connected Lawcast, and will be posting a bonus lawcast next week on the subject. Click here to listen to the Lawcast, and you can access our current Lawcast and the archive of past Lawcasts at this link.
Connect with our experts on the subject:
Intellectual Property Partner
The New gTLDs: Dispute Resolution Procedures during Evaluation, Trademark Post Delegation Dispute Resolution Procedure and Registry Restrictions Dispute Resolution Procedure (member sign in and private group request required to view)
“John supervises obtaining, protecting and licensing trade marks and hundreds of successful trade mark applications have been filed. He is involved in many opposition proceedings before the Trade-marks Opposition Board and actions for infringement. He works with a team of law clerks to deliver cost effective service.” (From John’s profile on CasselsBrock.com)
Cases of note:
- Canadian Tire Corporation, Limited v. 849075 Alberta Ltd.
- Eli Lilly & Company v. O’Hara Manufacturing Ltd.
Author of Brand Management in Canadian Law
“Jim has represented clients in hundreds of adversarial proceedings, including federal lawsuits, T.T.A.B. disputes and ICANN’s Uniform Domain Name Dispute Resolution Policy (“UDRP”). “ (From Jim’s profile on ArentFox.com)
Cases of note:
- Miguel Torres, S.A. v. Bodegas Muga, S.A., 176 Fed. Appx. 124 (Fed. Cir. 2006)
- America Online, Inc. v. AOL.org, 259 F. Supp.2d 449 (E.D. Va. 2003)
- America Online Latino v. America Online, Inc., 250 F. Supp.2d 351 (S.D.N.Y. 2003)
More to Come ….
This is just a taste of what we are offering during the next two weeks. Visit the event page to access tons of other free resources about gTLDs and brand management. There is also another podcast coming about practical strategies to deal with gTLD changes, a potential 10-page mini-guide for lawyers, and plenty of guest blog posts. It’s all happening on martindale.com Connected.