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ICANN's Proposed gTLD Expansion: What's in Store for Trademark Holders and Others



Tuesday, June 7, 2011
Product Code - LGAU02
Speaker(s): Mary W. S. Wong, University of New Hampshire School of Law; J. Scott Evans, Yahoo! Inc.; Debra Y. Hughes, American Red Cross; Jeffrey J. Neuman, NeuStar, Inc.; Kristina Rosette, Covington & Burling, LLP
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ICANN is nearing the finish line on its plan to introduce new generic top-level domains (gTLDs) to the internet root. Although some brand owners and others in the trademark community continue to have concerns over these new namespaces, others are also seeing new unique branding opportunities in applying for, and owning, their own corporate gTLD. With a final vote on the plan scheduled to take place at a meeting in Singapore on June 20, now is the time to prepare for what has been called the largest expansion of the Internet domain name system to date.

BNA has assembled top legal experts to help trademark counsel understand the forthcoming changes and advise clients on how to position themselves in the new environment, both in protecting their respective brands and in taking advantage of the potential opportunities that expansion presents.

Educational Objectives:

• New gTLDs opportunities and challenges for brand owners
• Factors to consider before applying for a gTLD
• Requirements and restrictions for potential applicants and domain strings
• Strategies to protect marks and web presence against competitors who enter the gTLD space
• Whether a new era of cybersquatting is on the horizon
• Venues to keep abreast ofand voice objections topotentially infringing domains
• Procedures for dispute resolution
• Applicability of the Lanham Act and ACPA

Mary W. S. Wong, University of New Hampshire School of Law; J. Scott Evans, Yahoo! Inc.; Debra Y. Hughes, American Red Cross; Jeffrey J. Neuman, NeuStar, Inc.; Kristina Rosette, Covington & Burling, LLP

Mary W. S. Wong
Professor of Law, Director, Franklin Pierce Center for Intellectual Property, Chair, Graduate Intellectual Property Programs
University of New Hampshire School of Law

Professor Wong is the current Chair of the Intellectual Property Graduate Programs at the University of New Hampshire School of Law. She joined the law school in 2005 from the Singapore Management University, where she was an Associate Professor of Law in the Lee Kong Chian School of Business. From 1998 to 2003 Professor Wong was Special Counsel to Morrison & Foerster LLP, resident primarily in its New York office. While at Morrison & Foerster, Professor Wong counseled American, European and Asian clients on a wide range of technology transactions, and provided advice on international and comparative legal developments relating to the Internet, privacy, e-Commerce and intellectual property. She has also been associated with the firm's Brussels and Singapore offices, and was previously a Senior Lecturer at the Faculty of Law of the National University of Singapore. In 2009, Professor Wong was elected to the Generic Names Supporting Organizations (GNSO) Council of the Internet Corporation for Assigned Names & Numbers (ICANN), representing ICANN’s Non-Commercial Stakeholder Group in its main policy development body. She has since been elected to serve as the Vice-Chair of the GNSO Council. Professor Wong is also the immediate past chair of the International Copyright committee of the American Bar Association’s (ABA) Intellectual Property Law Section and a member of the inaugural Editorial Board for “Landslide", the Section’s flagship publication. She has also served on the ABA's Copyright Reform Task Force.

J. Scott Evans
Senior Legal Director-Global Brand and Trademark
Yahoo! Inc.

Mr. Evans received his undergraduate degree from Baylor University and his Juris Doctor cum laude in 1992 from the Louis D. Brandeis School of Law at The University of Louisville. J. Scott served as Corporate Counsel for Fruit of the Loom where he was responsible for managing the international intellectual property portfolios for Fruit of the Loom and its associate companies The B.V.D. Licensing Corporation, Gitano, Pro Player and Salem Sportswear, Inc. In November 1996, J. Scott joined Adams Evans P.A. where he continued to concentrate his practice in the areas of trademark, copyright, unfair competition and Internet law. In November 2007, J. Scott joined the legal team at Yahoo! Inc. where he is responsible for managing the global trademark and domain name portfolios, trademark counseling and domain name policy issues. J. Scott served on the five member drafting committee that assisted the staff at the Internet Corporation for Assigned Names and Number (ICANN) with the drafting of the Uniform Dispute Resolution Policy (UDRP) and the Rules of Procedure for the UDRP. J. Scott is an active member of the International Trademark Association, where he served as a member of the Board of Directors and the Executive Committee. J. Scott currently serves as a special advisor to the Internet Committee. J. Scott frequently lectures on trademark and Internet policy issues as well as domain name dispute resolution.

Debra Y. Hughes
Senior Counsel
American Red Cross


Debra Hughes is Senior Counsel, Intellectual Property, for the Office of General Counsel for the American Red Cross. She advises the organization regarding patent, copyright, trademark and publicity concerns and drafts sponsorship, entertainment, fundraising and grant agreements. She manages the protection and enforcement of the organizations intellectual property and supports the IT team with online fraud and Internet issues. Prior to joining the American Red Cross, Debra worked as Assistant General Counsel for Wal-Mart Stores, Inc.

While at Wal-Mart, she directed and managed the product and packaging clearance program, was responsible for copyright and trademark enforcement and managed and created the policy for the company’s worldwide domain name portfolio among other IP tasks. Debra began her legal career as an associate at the international law firm, K&L Gates. Prior to practicing law, Debra was a high school Spanish teacher. Debra received her JD with honors from Texas Southern University and her Bachelors degree in Modern Languages and Linguistics from the University of Maryland. Debra was appointed to the Board of the International Trademark Association in January 2010. In 2009 Debra was appointed as a Councilor to the Internet Corporation for Assigned Names and Numbers (“ICANN”) GNSO Council with the charge to help increase the voice and participation of non-profit organizations within ICANN. She is a frequent speaker on trademark, copyright, entertainment, social media and internet issues and her true passion is providing leadership and empowerment training to college students.

Jeffrey J. Neuman
Vice President, Law & Policy
NeuStar, Inc.


Mr. Neuman has over 10 years of Internet, technology and telecommunication law and policy experience with domain expertise in ecommerce, e–business, service and technology licensing, M&A, joint ventures, strategic alliances and reseller arrangements. He is responsible for all legal services and policy for NeuStar’s Internet, Registry and Advanced Services Lines of Business. In addition to leading the legal team for these organizations, he is responsible for the oversight of intellectual property law and policy matters, information technology licensing as well as legal issues (including litigation) related to employment and insurance matters for the company. Mr. Neuman is a frequent speaker on issues involving intellectual property, domain names, online dispute resolution and the introduction of new generic top–level domain names. He previously served as Chairman of the gTLD Registries Constituency of ICANN and has participated in numerous task forces and working groups within ICANN’s Generic Names Supporting Organization. Before joining NeuStar, he served as Information Technology Associate at Greenberg Traurig, LLP/ Akin, Gump, Strauss, Hauer & Feld, LLP, and as an associate at the law firm of Arter & Hadden, LLP. Mr. Neuman holds a J.D. from The George Washington University Law School.

Kristina Rosette
Special Counsel
Covington & Burling, LLP


Kristina Rosette is a Special Counsel at Covington & Burling LLP where she specializes in trademark and domain name matters. Since 2006 she has represented the Intellectual Property Constituency on ICANN's GNSO Council and played a leading role in the creation (and was a member) of the ICANN Implementation Recommendation Team, the 18-person global team of trademark experts who designed and recommended trademark protections for the introduction of new gTLDs. Kristina is the past chair of the International Trademark Association (INTA) Internet Committee Subcommittee on Registration Practice and DNS Administration, is a Special Advisor to the INTA Internet Committee, and was the first person to win two INTA Volunteer Service Awards – both in recognition of her efforts to advance trademark owner interests in ICANN policies. In addition, Kristina serves as a panelist for proceedings under the Uniform Domain Name Dispute Policy for both the World Intellectual Property Organization and the Czech Arbitration Court.