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Ohlandt, Greeley, Ruggiero & Perle, L.L.P.
MEMORANDUM
Re: Recent Developments in the area of Domain Names
From:
Terrence J. McAllister, Esq. and Jeffrey J. Scepanski, Esq.
Date:
September 30, 2011
_____________________________________________________________
We
want to take this opportunity to alert you to two matters that may have an
impact on your brand and trademark portfolios going forward. Our summary
includes the relevant deadlines should you wish to consider pursuing further
actions.
1. New gTLDs from ICANN
Internet Corporation for Assigned Names and Numbers (ICANN)
has recently
approved
allotment of new generic top level domain names (new gTLDs). Currently the most
popular top level domain space is the .COM domain space. The introduction of
new generic top level domain names will allow for the registration of any top
level domain name that the owner desires, subject to certain character
limitations as set forth by ICANN. This provides
brand
and trademark owners
with an opportunity to give thoughtful consideration to registering their
company names, brands and trademarks as gTLDs. For example, a company such as
McDonald’s® would be able to apply to register its own exclusive
domain space as .MCDONALDS.
In addition to the financial, marketing and business issues, the process for
considering whether to register for a new gTLD should involve an exhaustive
legal analysis of the benefits of such registration. Issues of cyber squatting
and domain name violations, brand violations, trademark violations,
ensuring security of new gTLDs,
etc may arise. Further, many
unforeseen challenges
that cannot be anticipated and warned against may also arise as the system
evolves.
The process for registration is both complicated and costly. The application
form itself is lengthy. The initial projected fees for the application now are
US $185,000. Also, considering the fact that registering and operating a gTLD
will in effect involve operating your own Internet registry, the additional
costs associated with establishing an up and running gTLD could be as high as
$1,000,000 or more. In addition, there are many pitfalls in the process and
there are no guarantees of acceptance by ICANN. Applications could also face
opposition or objections by various third parties.
With
these new gTLD registrations, issues like
domain
name protection,
brand protection, trademark protection, cybersquatting dispute resolution, legal
and technology compliance, security requirements, and
due
diligence,
will arise. As such, brand owners and trademark owners must prepare their “strategy”
in this regard well in advance.
The new gTLD application process would start from January 12, 2012 to
April 12, 2012. Detailed information regarding the new gTLD program can
be found at the following link on the ICANN website:
http://www.icann.org/en/topics/new-gtld-program.htm
2. New .xxx domain names
The
new .XXX generic top-level domain namespace has been designed specifically for
the adult industry. Registered brand and trademark owners who want to protect
their marks from being used as a .XXX top-level domain will have until
October 28, 2011 to file a request to block their brands or trademarks
from being registered as a .XXX domain name.
In
order to qualify for the limited opt-out period (referred as the “Sunrise B
Period,”) the brand or trademark must be registered in the US or internationally
and issued prior to September 1, 2011. Unregistered trademarks or
service marks (including common law), U.S. state trademarks, and trademarks or
service marks for which an application or registration has lapsed, been
withdrawn, revoked, canceled, or otherwise is no longer in full force and effect
cannot be the basis for this request.
A
successful application to block a domain name by a qualified registered
trademark owner under the Sunrise B Period, and not subject to a competing
application from an adult industry applicant under a concurrent Sunrise A
Period, will result in the domain name being removed from the pool of domain
names available for registration. The domain name will resolve to a standard
informational page indicating the status of the domain name as “not available
for registration” or similar and the corresponding WHOIS information will simply
list standard registry information rather than information about the Sunrise B
applicant.
Please
note that in the event both Sunrise A (adult industry) and Sunrise B (non-adult
industry) applicants apply to reserve the same domain name, the parties will be
notified, giving the adult industry applicant the opportunity to withdraw the
application
for
the domain name to avoid any potential dispute. Once the Sunrise A and B Periods
have passed and the general availability phase is open, registrations will be
run on a first-come, first-served basis, with no pre-emptive rights protection
in place. Although there will be post-launch rights protection mechanisms
available, trademark owners may find the pre-emptive blocking approach provided
with the Sunrise B Period to be more cost effective. The cost charged by
participating registrars for a Sunrise B application appears to range from
$300-$500 per mark.
Trademark owners considering filing blocking requests with a participating
registrar during the Sunrise B Period for their federally registered marks
should
act
immediately.
Detailed information regarding the Sunrise B Period can be found at the
following link:
http://icmregistry.com/launch/sunrise-b/
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While the issues of cost and business value will be of great importance with
regard to decisions concerning the proposed new gTLDs, you may be more concerned
about the potential for the registration of your brand or trademark for the
proposed .xxx space that has been reserved for the adult themed content
community.
We
can be available to discuss either of these matters in more detail at your
earliest convenience.
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