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John B.
Farmer

 

Lawrence E. Laubscher, Jr.

 

Ian D. Titley

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Act Fast to Protect Yourself from the New Domain Names

Monday, January 23rd, 2012

The process just launched for what could be hundreds of new generic top-level domain names (“gTLD’s”). If you want to protect your business from cybersquatting and opportunity loss in those domain names, you need to get moving now.

A top-level domain name refers to the part of the domain name after the last dot, such as .com or .org.

Up until now, the organization that controls the domain-name system – the Internet Corporation for Assigned Names and Numbers (“ICANN”) – has approved only a few gTLD’s.

These top-level domain names are “generic” because they don’t refer to a specific country. There also is a topic-level domain name assigned to each country, such as .us for the United States.

ICANN just opened the process for anyone to apply to operate a new generic top-level domain name (“gTLD”). We may see about a couple hundred new gTLD’s in a little more than a year and eventually thousands.

Domain names will be sold in most of the new gTLD’s. For example, a new gTLD might be .swim, and someone could register the domain name faster.swim, which could be used to put up a website at www.faster.swim.

You may want to defend your trademarks – your product and service names, and perhaps your company name and ad slogans – against cybersquatting in these new domain names.

Also, because sometimes the same word is a trademark for different products from different companies – think CHAMPION spark plugs and CHAMPION sporting goods – you may want to win the race for domain names for such matching trademarks.

Generally speaking, here’s what to do:

1. Apply immediately to federally register your trademarks. You will need these registrations to claim certain rights as the new domain names roll out. You must start immediately to have a chance of obtaining these registrations by the time you will need them.

2. Monitor the new gTLD applications to see if any of them are too similar to your trademarks. The application period opened on January 12, 2012. The applications will be published around the end of April 2012. At that time, you will have about seven months to object to a new gTLD.

The applications will be published on ICANN’s website. Watch http://newgtlds.icann.org/en/.

3. Around October 2012, ICANN will open a database called the “Trademarks Clearinghouse” in which you can record your trademarks. This won’t protect you against new gTLD’s that are too similar to your trademarks – there will be another way to deal with that. But such recording will provide you with limited protection against others registering exact-match domain names in the new gTLD’s.

For example, if you own the trademark PALMPINES and if someone opens a new gTLD called .trees, you could get limited protection for the potential domain name PalmPines.trees. You might have the chance to register that domain name before others.

4. The first round of new gTLD’s could begin selling domain names as soon as January 2013 (it probably will be a few months later). When the new gTLD’s open up, consider buying preemptive domain name registrations, to keep the domain names away from others.

Which domain names you may choose to buy in a new gTLD will depend on the popularity of the new gTLD, its relevance to your business, and your budget for protecting yourself here.

5. Use a watching service to monitor for problematic domain name registrations in the new gTLD’s. It is impossible to preemptively register every domain name that might cause you problems, so you may need to take action against domain names registered by others.

In addition, use a search engine every month to see what results come up for your trademarks and set up Google Alerts on each of them.

The most important thing, though, is to register your trademarks now. You need to move fast to get those registrations in place in time for them to help you.

by John B. Farmer
Published in the Richmond Times-Dispatch