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Friday, January 4, 2013

Cyberlaw Predictions: Protecting Trademark Interests in the New Domains

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This post is the sixth in a series of predictions from legal and business experts about the directions cyberlaw policy might take in 2013, solicited by editors of BNA's Electronic Commerce & Law Report during the closing weeks of 2012. We asked that the remarks be brief -- something along the lines of a Twitter "tweet" or an elevator pitch. Over 100 attorneys, law professors, online business executives, policy advocates and other cyberlaw experts responded, producing 307 separate assessments, predictions, or just plain complaints regarding any of the many legal subject areas that affect online businesses.

For the past several years the domain name industry has trumpeted the economic benefits of new top-level domains to anyone who would listen -- to ICANN, to investors, to the domain-consuming public, to the world's governments. Some of the rhetoric might have been a teeny tiny bit overstated. Think Ron Popeil selling Veg-o-Matics during the Yukon Gold Rush. The domain industry's marketers are right, of course. Everybody needs their vegetables chopped, and some people made a lot of money picking gold nuggets out of Bonanza Creek.

klondike gold rush

The domain industry's rhetoric has been matched by the protests of brand owners and trademark attorneys, who will soon have the job of protecting their business interests against cybersquatters in hundreds of new top-level domains, operated in countries all around the world. Many brand owners worry that there's nothing in the "new internet" for them. They get none of the money, but all of the headaches of playing trademark whack-a-mole across millions of new domain names.

Any company with online business interests will need to become familiar with ICANN's New Generic Top-Level Domains program in general and, in particular, the new trademark protection procedures that brand owners have negotiated with ICANN. Right now, these include the Trademark Clearinghouse and the Uniform Rapid Suspension System (URS).

In addition, brand owners have an objections process they can use to keep proposed top-level domains from being approved by ICANN, and they also have the ability to negotiate protections from new domain applicants on a case-by-case basis. Brand owners also have the ability to lobby ICANN's Government Advisory Committee, or individual governments. Finally, if all else fails, aggrieved brand owners can file lawsuits. In all, there is a lot of lawyering going on in this space.

The experts' views:

The establishment of ICANN's Trademark Clearinghouse in 2012 will have profound ramifications for 2013 and beyond. It is anticipated that the Clearinghouse will connect not only for pre-registration claims and pre-launch sunrise, but very likely also for URS complaints and perhaps even UDRP complaints. Planning an appropriate Clearinghouse strategy is job one for the trademark practioner. Paul D. McGrady, Partner, Winston & Strawn LLP, Chicago.

The Trademark Clearinghouse, as incorporated into the ICANN Top-Level Domain program, offers novel, groundbreaking, global protection for rights holders. Adrian Kinderis, @AdrianKinderis, Chief Executive Officer, ARI Registry Services, Melbourne & Los Angeles.

1930 new gTLD applications? Over 1/3 .brands? Even gTLD doubters must admit that a new internet is around the corner. And a new ICANN, too, once the .brands sign contracts. Kristina Rosette, @kristinarosette, Of Counsel, Covington & Burling LLP, Washington, D.C.

ICANN Toronto was the calm before the new gTLD storm. By April in Beijing the program will be steeped in new legal and policy controversies. Philip Corwin, @vlawdc, Founding Principal, Virtualaw LLC, Washington, D.C.

Bar none, the most important trademark-related issue of 2013 will be ICANN's expansion of top-level domain names, going from .com and a couple dozen others to over 1,000. If trademark owners are not prepared, it will crush them like an avalanche. Brad R. Newberg, Partner, Reed Smith, Falls Church, Va.

Eye-popping sums will ultimately be paid for the hottest new gTLDs, but many of the new applications will get bogged down in process and litigation and fail to ever take off. Mark Owen, Partner, Harbottle & Lewis, London.

Watch out for the launch of new gTLDs and have your proactive or defensive strategy in place. New rights protection mechanisms facilitate digital brand management. Are you ready for the challenge? Thomas Rickert, @thomasrickert, Managing Partner, Schollmeyer & Rickert Law Firm, Bonn & Frankfurt, Germany.

Trademark clearinghouse, sunrise, trademark claims, URS. Finding the balance between trademark enforcement budget busters and valuable new gTLD rights protection mechanisms will be a critical challenge for brand owners in 2013. Kristina Rosette, @kristinarosette, Of Counsel, Covington & Burling LLP, Washington, D.C.

2013--the year the internet changed, new gTLDs into the root. Time to see whether all the efforts to have clean space will work or not. David Taylor, Partner, Hogan Lovells, Paris.

Next year or two will see the launch of 1000 new domain endings, gTLDs. There are strengthened brand protection mechanisms, but they are untried, and unproven. Review your online protection strategies now. Emily Taylor, @etaylaw, Consultant, Emily Taylor Consultancy Limited, Oxford, United Kingdom.

New gTLDs will either change the nature of the internet or will go the way of all other gTLDs introduced after .com (when was the last time you bought or went to a .biz domain name?). Or maybe a little of both depending on the gTLD. Either way, they are going to exponentially increase the cost of monitoring and enforcement for IP owners. Marc H. Trachtenberg, @winstonadvlaw, Partner, Winston & Strawn LLP, Chicago.

Expect around 1,200 new gTLDs to be approved for the internet in the next couple of years. Some could even launch in 2013! Let's hope this bold expansion of the internet doesn't take trademark holders back to the dark old days of the Wild Wild Web. But look on the bright side. New IP protection mechanisms developed for new gTLDs may end up improving trust and safety for TM holders on the Web. Stephane Van Gelder, @stephvg, Chairman and Managing Director, Stephane Van Gelder Consulting Ltd., United Kingdom/France.

Defensive registrations in the second level will be "all the rage" in late 2013 and 2014 as new gTLD registries go online. Savvy brand owners will resist the urge to stock up on second level domain names that they don't need and that fail to drive meaningful customer traffic. Paul D. McGrady, Partner, Winston & Strawn LLP, Chicago.

New gTLDs will force TM owners to adapt strategies for online TM protection. Volumes of C&D's and defensive reg's is not a viable strategy. David E. Weslow, @davidweslow, Partner, Wiley Rein LLP, Washington, D.C.

Claims by TM owners against domain registry operators are likely to increase due to registry business models and ancillary service offerings. David E. Weslow, @davidweslow, Partner, Wiley Rein LLP, Washington, D.C.

The outcome of the debate around second level protections for trademark owners in new gTLDs will be a key development in 2013. While the IPC-BC proposal is unlikely to gain broad support, already there are signs in the ICANN "strawman" proposal that a stronger result for trademark owners is in the offing. Martin Burke, @melbourneitdbs, EVP, Melbourne IT DBS, London.

gTLDs will be a catalyst for disruptive innovation, requiring more critical analysis by IP departments in protecting digital assets via design patents and copyright. Jen Wolfe, @JenWolfe, President, Wolfe Domain, Cincinnati.

Trademark lawyers have opportunity to create economies of scale by thinking innovatively about brand protection in an expanding internet environment. Jen Wolfe, @JenWolfe, President, Wolfe Domain, Cincinnati.

Trademark interests will not be satisfied by the ultimate resolution of the "Strawman" debate and will pivot in the first quarter of 2013 to demands related to ICANN's enforcement of Applicant Guidebook qualifications and new gTLD registry agreement requirements. Philip Corwin, @vlawdc, Founding Principal, Virtualaw LLC, Washington, D.C.

Regardless of what happens with the expansion of top-level domains in 2013, all trademark owners should be prepared to take additional steps to protect their brands online from cybersquatters and other bad actors. Doug Isenberg, @dougisenberg, Founder, The GigaLaw Firm, Atlanta.

The first new generic top level domains will begin to rollout in 2013. Brand owners should expect a substantial increase in cybersquatting despite the rights protection mechanisms that have been adopted by ICANN. James L. Bikoff, Partner, Silverberg, Goldman & Bikoff, LLP, Washington, D.C.

Trademark lawyers must integrate with marketing to combine offensive and defensive strategy in brand protection in an expanding internet environment. Jen Wolfe, @JenWolfe, President, Wolfe Domain, Cincinnati.

Despite the introduction of ICANN's Uniform Rapid Suspension System (URS), the Uniform Domain Name Dispute Policy (UDRP) will remain one of the most important and successful legal tools for trademark owners online. Doug Isenberg, @dougisenberg, Founder, The GigaLaw Firm, Atlanta.

For ICANN's new gTLDs, 2012 took us through a dramatic serious of events: 1,900+ applications and an Intellectual Property community nervous about the Trademark Clearinghouse, URS, sunrise and what post-delegation will look like. In 2013, it will not only be about establishing strategies to manage and mitigate potential abuses, but also educating the general public because in a survey of 2,000 Internet users only about 25 percent know the new gTLDs even exist. Jamila Enta, @jamilaenta, Account Manager, BrandProtect, Ontario, Canada.

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