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Thursday, February 6, 2014

Cyberlaw Review 2014: ICANN's New Top-Level Domains

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Bloomberg BNA asked leading attorneys, government officials, and online experts for their views on the most important legal developments in online law during 2013 and on what policy areas they believed would be the most important to their practices in 2014. We asked that the responses be short and to the point, similar to a “tweet” or status update. The result is the collection of brief insights published below, many of which have been lightly edited and categorized by subject matter.

The comments below--each attributed to the author, the author's law firm or organization, website, Twitter username and blog--are published for informational purposes only and do not constitute legal advice.

New Top-Level Domains

New gTLDs are already far safer for registrants and end-users than are legacy gTLDs. That statement will be borne out by metrics we collect in 2014. Paul Stahura (@stahura), CEO, Donuts Inc., Bellevue, Wash.

2013 was the year new gTLDs finally became a reality with, at the time of writing (December), already more than 30 new suffixes active on the Internet. Everyone will now have to adjust. Users and innovators, to make the best of the new virtual real estate opportunities, and corporations the world over, to adapt their offensive (commercial) and defensive (legal) strategies accordingly. Stephane Van Gelder (@stephvg), Chairman and Managing Director, Stephane Van Gelder Consulting Ltd., United Kingdom/France. Blogs at Stephane Van Gelder Consulting Ltd..

2014 will be the year the Internet truly becomes a global marketplace with limitless possibilities. With new extensions, brands, terms, languages, cities, and businesses all converging into the New gTLD space and vying to establish themselves as natural identifiers and traditional search alternatives. The way we explore the Internet could take a dramatic shift. David Mitnick (@domainskate), Founder and President, Domain Skate LLC, New York.

2014 will bring a digital transformation with the big bang of the internet exploding as 1,000 + new top level domains expand the internet landscape, led by Google, Amazon and half of the world's top brands. Every CEO needs to understand this will impact how consumers use and navigate the internet. Jen Wolfe (@JenWolfe), President, Wolfe Domain, Cincinnati.

2014 will see the Internet evolve to allow the 5 billion non-English speakers around the world access to the Internet in their native script. Adrian Kinderis (@AdrianKinderis), Chief Executive Officer, ARI Registry Services, Melbourne & Los Angeles. Blogs at ARI Registry Services Blog.

2014 will see the launch of direct registrations under.uk (instead of.org.uk and.co.uk). Many British charities and non-profits may get a nasty surprise if they want to convert to.uk. Under Nominet's revised rules, thousands of non-profits are predicted to lose out to.co.uk holders of the same name. Emily Taylor (@etaylaw), Consultant, Emily Taylor Consultancy Limited, Oxford, United Kingdom.

As of ICANN 48 in November 2013, new gTLD applicants prevailed in 86% of all objections resolved by panel decisions. While these seem like good odds, inconsistency and lack of clarity, particularly in the string confusion arena, have applicants seeking more specific determination criteria and some form of appellate review. In addition, delays continued to plague the community objection process. ICANN's New gTLD Program Committee will likely need to review these results and ensure concerns are addressed in order to refine objection procedures before any future new gTLD application rounds. Brian Winterfeldt, Head of Internet Practice, Katten Muchin Rosenman LLP, Washington, D.C.

As soon as the first Chief Marketing Officer of a non-applicant Brand sees the competitor's.Brand on a bus or billboard, a top priority of many have-nots will be to get ICANN to open Round 2. Paul D. McGrady, Partner, Winston & Strawn, Chicago.

Ask a non-lawyer if he/she knows that new gTLDs are about to launch. Then wonder if the only purpose of this program was to keep trademark owners up at night. By the end of 2014, we may know the answer. Brad R. Newberg (@bradnewberg), Partner, Reed Smith, Falls Church, Va.

Brand Owners will begin to fully realize that, ready or not, the new gTLD trains have left the station, and they're here to stay. Joanne Ludovici (@jobrandlady), Partner, McDermott Will & Emery, Washington, D.C.

Dotless domains, odd objection outcomes, “new” name collision concerns, confidential Board resolutions, international Internet governance gambits. Not a dull year in ICANNland. Kristina Rosette (@kristinarosette), Of Counsel, Covington & Burling LLP, Washington, D.C.

Everyone says 2014 will be the year of the new gTLDs. I say it will be a dud. Lots of angst and drama; few registrants and little traffic. The big winners will be .com (which will be confirmed as the Park Avenue of the Internet) and search engines (which will grow even more in importance as confusion reigns in the TLDs). David H. Bernstein, Partner, Debevoise & Plimpton LLP, New York.

Expect to see many gTLDs implode in the first year when they realize after delegation that their business plans are not permitted by ICANN rules. Marc H. Trachtenberg (@winstonadvlaw), Partner, Winston & Strawn LLP, Chicago.

Huh; you don't have an online brand protection strategy? With more than 1,000 new gTLDs (generic top-level domains) becoming available for registration you'll need one. Andrew Berger (@IPInBrief), Counsel, Tannenbaum Helpern Syracuse & Hirschtritt LLP, New York. Blogs at IP In Brief.

ICANN required new gTLD registries to require registrars to make registrants sign contracts saying that their domain names can be taken away if they “violate any applicable law.” David Johnson, New York, N.Y.

In 2013, ICANN completed its initial evaluations of new gTLD applications, with the first new registries being delegated towards the end of the year. With some sunrise periods now underway and many more Registry Agreements executed, the stage is set for a major Internet expansion in 2014. Brian Winterfeldt, Head of Internet Practice, Katten Muchin Rosenman LLP, Washington, D.C.

In June 2011, the Internet Corporation for Assigned Names and Numbers announced that it was allowing registrants to expand the Internet beyond the traditional top-level domains, such as .com, .net, and .org, and to submit their own invented suffixes for registration. In the first round of this expansion, nearly 2,000 applications were submitted for over 1,400 distinct new generic top-level domains (gTLDs)--including, for example ,.tech, .fashion, .youtube, and .samsung. The launch of these new gTLDs began in the last quarter of 2013, and the bulk of these new gTLDs will be delegated and launched over the course of 2014. James L. Bikoff, Partner, Silverberg, Goldman & Bikoff, LLP, Washington, D.C.

New gTLDs will catch on slowly as the culture absorbs the opportunities they hold. But they will catch on..BRANDS will light the fire, and the introduction of the most popular of Google's 98 new gTLDs and Amazon's 76 will fuel the fire. Josh S. Bourne, Managing Partner, FairWinds Partners, Washington, D.C. Blogs at gTLD Strategy Blog.

New gTLDs will reshape online brand protection efforts and will require more targeted & deliberative trademark enforcement by brand owners David E. Weslow (@davidweslow), Partner, Wiley Rein LLP, Washington, D.C.

The Uniform Rapid Suspension (URS) system is another new rights protection mechanism created for the gTLD expansion that is designed to give trademark owners a faster, cheaper alternative to the UDRP in clear-cut cases of domain name-related trademark infringement. The sole remedy available through URS is suspension of the domain name for the balance of its registration period. Based on the only case filed thus far, involving the domain facebok.pw, this new tool appears to function as efficiently and effectively as intended. Trademark owners are sure to take increasing advantage of the URS in 2014. James L. Bikoff, Partner, Silverberg, Goldman & Bikoff, LLP, Washington, D.C.

New gTLDs will start to make an impact on the market, and the new rights protection mechanisms such as URS will start to be road-tested. The first case indicates that URS can be useful in obvious typosquatting cases, especially if you don't want to end up managing huge domain portfolios that are irrelevant to your business. Emily Taylor (@etaylaw), Consultant, Emily Taylor Consultancy Limited, Oxford, United Kingdom.

The future is here - New gTLDs were open for business in 2013. TM owners must stay vigilant and watch for new Sunrise announcements to ensure their most valuable marks are protected. Jamila Enta (@jamilaenta), Senior Manager, BrandProtect, Ontario, Canada.

The gradual expansion of the gTLD namespace has not caused the world to come to its end. John Slafsky, Partner, Wilson Sonsini Goodrich & Rosati, Palo Alto, Calif.

The introduction of hundreds of new gTLDs provides for both opportunities and challenges. Do you have a sound strategy in place to get your premium piece of new virtual property and yet minimize risks for your brand? Thomas Rickert (@thomasrickert), Managing Partner, Schollmeyer & Rickert Law Firm, Germany.

The new namespace will be cleaner and safer and than existing gTLDs. New protections, like Uniform Rapid Suspension, mandatory trademark sunrise and registry services like Donuts' Domains Protected Marks List will be effective tools in discouraging cybersquatting. Jon Nevett, Co-Founder & EVP, Donuts Inc., Bellevue, Wash.

The rights protection mechanisms (RPMs) for social vs. economic spheres are of necessity different and sometimes clashing. Since the Internet is BOTH, unless there is clearer recognition of the need to create appropriate RPMs for each, ineffective debate and power-struggles persist and brand protection will continue to suffer backlash.“ Ellen Shankman, Principal, Advocate, Notary, Ellen B. Shankman & Associates, Rehovot, Israel.

The word of the year in internet law in 2013 was an acronym: gTLDs. Trademark owners have been registering their brands with the TMCH and cautiously watching the “sunrise” launches of new generic top-level domains. Eleanor M. Lackman (@EMLackman), Partner, Cowan DeBaets Abrahams & Sheppard LLP, New York. Blogs at CDAS IP, Media and Entertainment Law Blog.

There will be a flurry of activity as brand owners allocate more resources to get their trademarks registered with the TMCH. Joanne Ludovici (@jobrandlady), Partner, McDermott Will & Emery, Washington, D.C.

Trademark Clearinghouse, Sunrise, Trademark Claims, URS. Trademark enforcement budget busters or valuable new gTLD RPMs? Still an open question and a critical challenge for brand owners in 2014. Kristina Rosette (@kristinarosette), Of Counsel, Covington & Burling LLP, Washington, D.C.

Trademark owners planning to register their marks with the Trademark Clearinghouse can expedite the process, and achieve dramatic cost savings, by conducting a preliminary internal audit of their marks to locate proof of use for filing with the Trademark Clearinghouse and to determine which registrations will be valid for the longest period of time. Lynne Boisineau, Partner, McDermott Will & Emery, Irvine, Calif.

While 2014 will be the year new domains are launched, we won't see critical mass adoption for many years to come. Brands will lead the way on awareness & education. Adrian Kinderis (@AdrianKinderis), Chief Executive Officer, ARI Registry Services, Melbourne & Los Angeles. Blogs at ARI Registry Services Blog.

With new gTLDs moving through the pipeline toward public launch, ICANN's focus will shift to Internet governance. That will be a tricky maneuver to accomplish gracefully, given the organization's adherence to the “multi-stakeholder model.” Josh S. Bourne, Managing Partner, FairWinds Partners, Washington, D.C. Blogs at gTLD Strategy Blog.

New Top-Level Domains Webinar

On March 5, Bloomberg BNA is putting on a free webinar, The Latest on ICANN's gTLD Program: Today’s Business Opportunities and Legal Risks. Additional information about the webinar is available at the link.

We're fortunate to have as faculty top experts from the Internet Corporation for Assigned Names and Numbers, the Domain Name Association, Deloitte, and the National Arbitration Forum. The last half-hour of the webinar will provide an opportunity for listeners to ask questions of these experts on any topic: ICANN processes, operating and profting from the new level-domains, and developing sound strategies against cybersquatting in the new domain spaces.  

This webinar promises to be well worth the time of anyone with a business or law practice interest in ICANN's new top-level domains program.

Other Posts in This Series

Cyberlaw Review 2014: Snowden Leaks, New Domains, Global Jockeying For Internet Governance Role Still Dominate Cyberlaw Hot Topics in 2014

Cyberlaw Review 2014:  Cloud Computing, Computer Crime, Consumer Protection, Data Breaches

Cyberlaw Review 2014: Digital Copyright, Digital Divide, Domain Name Disputes, Trademarks, Entrepreneurship, Intermediary Liability, Internet Freedom

Cyberlaw Review 2014: Internet Governance

Cyberlaw Review 2014: Internet of Things, Online Contracts

Cyberlaw Review 2014: ICANN's New Top-Level Domains

Cyberlaw Review 2014: Privacy Regulation

Cyberlaw Review 2014: Social Media, Software Patents, Telecom Regulation

Cyberlaw Review 2014: Electronic Surveillance, Emerging Payment Technologies

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