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The Latest on ICANN's gTLD Program: Today’s Business Opportunities and Legal Risks

The Latest on ICANN's gTLD Program: Today’s Business Opportunities and Legal Risks
Product Code - LGN236
Speaker(s): Cyrus K. Namazi, Internet Corporation for Assigned Names and Numbers; Kurt Pritz, Executive Director, Domain Name Association; Jon Nevett, Donuts Inc.; Kristine F. Dorrain, National Arbitration Forum; Vicky Folens, Trademark Clearinghouse; Moderator: Thomas O'Toole, Bloomberg BNA
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In 2014, the Internet domain name system will grow from 22 to as many as 1,000 top-level domains. Familiar domains such as .com and .net will be joined by domains such as .food, .bike, .music, .film, .fashion, .book, .law, .llc, .nyc, .london, and hundreds of others. This marked and rapid expansion of the Internet will create unprecedented business opportunities as well as serious brand protection issues.

This program will provide an update on the state of the new top-level domains program delivered by highly placed leaders in charge of key aspects of the program. The faculty will present solid information on business opportunities presented by the new top-level domains and will discuss the novel legal remedies that are available for businesses and other brand owners to protect their trademarks from being infringed on by the new top-level domains.

Educational Objectives:

• Gain an understanding of the current status of the new top-level domains program, including which domains have been delegated and which are about to be delegated.

• Learn about proactive strategies that can be employed to protect your clients’ interests in the new top-level domains.

• Discover some of the unique features and business models of the new top-level domains.

• Understand why – or why not – to register clients’ marks in the Trademark Clearinghouse and the Donuts Domain Protected Marks List (DPML).

• Find out about the interplay between the Trademark Clearinghouse, the Sunrise Registration Periods offered by each domain, and legal remedies such as the Uniform Rapid Suspension Service and the Uniform Domain Name Dispute Resolution Policy.

• Understand how to invoke the Post-Delegation Dispute Resolution Procedure if a recently delegated top-level domain is acting in bad faith and/or facilitating infringement of your clients’ trademark rights.

• Learn how to invoke the Registry Restriction Dispute Resolution Procedure if you believe a recently delegated community-based top-level domain operator is violating promises it made during the application process.

Who would benefit most from attending this program?

Consumer protection, marketing and trademark attorneys, in-house attorneys managing corporate trademark portfolios, government regulators, lobbyists for the online business and telecommunications industry, marketers and Internet business developers, and online entrepreneurs.

Program Level: Intermediate-Advanced
Prerequisite: A general understanding of Internet domain names.
CPE Delivery Method: Group Internet-Based Live
Field of Study: Specialized Knowledge and Applications
Recommended CPE Credit: 1.5 credits
Anticipated CLE Credit: 1.5 credits (may vary based on from which jurisdiction requested)

For additional information, please see the “CE Credit” tab.

Cyrus K. Namazi, Internet Corporation for Assigned Names and Numbers; Kurt Pritz, Executive Director, Domain Name Association; Jon Nevett, Donuts Inc.; Kristine F. Dorrain, National Arbitration Forum; Vicky Folens, Trademark Clearinghouse; Moderator: Thomas O'Toole, Bloomberg BNA

Cyrus K. Namazi, Internet Corporation for Assigned Names and Numbers
Cyrus Namazi serves as Vice President, DNS Industry Engagement, with the Internet Corporation for Assigned Names and Numbers. Prior to his current position at ICANN, he was Principal and co-founder of Claro Concepts, providing consulting services and guidance on bringing products from concept to design, through manufacturing, and to market. With more than 20 years of experience in business development, general management, operations and engineering, Mr. Namazi has served in a number of executive and management roles in the technology sector.

Mr. Namazi previously held the position of Vice President of Marketing & Application Engineering at Conexant Systems, managing global marketing and application engineering teams. Before joining Conexant, he was Vice President of Marketing & Business Development at Solarflare Communications and Senior Director of Marketing & Application Engineering at Infineon Technologies. Mr. Namazi has also been a Director of Strategic Marketing & Business Development at Broadcom Corporation, where he developed and executed the company's market entry plan into the DSL market. During his time as Director of Marketing & Business Development at Advanced Micro Devices (AMD), where he was responsible for defining and directing AMD's networking and communication products, Mr. Namazi also led the creation of the Home Phoneline Networking Alliance (HomePNA), in which he served as President and Chairperson for two years.

Mr. Namazi earned an M.B.A. from the University of Southern California and a B.S. in electrical engineering from the University of Missouri-Rolla, both with honors.

Kurt Pritz, Executive Director, Domain Name Association
Kurt Pritz is Executive Director of the Domain Name Association. He played an important role in the growth of ICANN and is best known as the architect of ICANN's new gTLD program. He will build on deep, positive existing business relationships within the industry to develop a vibrant, effective association: applying his track record in teambuilding and bringing together diverse skillsets to the knowledgeable and talented members of the Domain Name Industry.

Prior to joining ICANN, Mr. Pritz spent nearly a decade at Walt Disney Imagineering where, as Vice President, Engineering & Production, he was responsible for the technical design and delivery of theme park shows and rides worldwide. He also served Eaton Corporation as Plant Manager, advancing the state-of-the-art in automated electronics and avionics manufacturing.

Mr. Pritz earned a J.D. and an M.B.A. as well as a B.S. and an M.S. in Physics. He is admitted to the California State Bar. He has published in technical journals and law reviews and has testified before Congress on three occasions to promote and explain the benefits of the new gTLDs. Mr. Pritz was named one of the 50 most influential people by Managing Intellectual Property magazine in 2011 and 2012.

Jon Nevett, Donuts Inc.
Jon Nevett, a veteran of the domain name industry, is Co-Founder and Executive Vice President, Corporate Affairs of Donuts Inc. He is a founding Board member of the Domain Name Association, the industry’s trade association and has served on numerous ICANN task forces, working groups, and panels. Prior to Donuts, he served as President of Domain Dimensions, Senior Vice President at Network Solutions, and Chairman of the Board of NameJet and Central Registry Solutions.

At ICANN, Mr. Nevett formed and served as the first Chair of the New gTLD Applicant Group (NTAG), advised on how best to protect trademarks with New TLDs on the Implementation Recommendation Team (IRT), the Special Trademark Issue team (STI), and on the International Trademark Association’s Internet Committee.

Mr. Nevett earned a J.D. from Harvard Law School and an undergraduate degree from Binghamton University.

Kristine F. Dorrain, National Arbitration Forum
Kristine Dorrain serves as Director of Internet and IP Services for the National Arbitration Forum (the FORUM). She oversees the FORUM’s arbitration and mediation programs, including the FORUM’s internationally recognized domain dispute program. She also manages the recruitment and organization of the FORUM’s arbitration and mediation panels.

At the FORUM, Ms. Dorrain’s work focuses on providing legal counsel for the domain dispute and other arbitration programs. She counsels FORUM case management staff as well as ensures that FORUM arbitration panelists are adhering to the relevant domain name dispute rule sets. Additionally, Ms. Dorrain oversees the strategic development of the FORUM’s premium IP Arbitration and Mediation panel. She ensures that the FORUM’s IP Panel includes the most well-trained and experienced IP arbitrators and mediators in the business. Ms. Dorrain also plays a significant role in marketing the FORUM’s overall ADR services.

Prior to joining the FORUM, Ms. Dorrain was an Intellectual Property Assets Manager for Samsung Electronics. While at Samsung, she managed patent prosecution and an extensive patent case portfolio and was responsible for preparing and evaluating invention disclosures, writing patent applications and managing research on prior art.

Ms. Dorrain earned a J.D. from William Mitchell College of Law and is currently an Adjunct Professor for William Mitchell’s Intellectual Property Appellate Practice course. She coaches the school’s Saul Lefkowitz, John Marshall IT and Privacy Law, and BMI/Cardozo Moot Court Competition teams.

Vicky Folens, Trademark Clearinghouse
Vicky Folens is Project Manager for Deloitte, the Verification Provider of the Trademark Clearinghouse. Ms. Folens is an intellectual property lawyer with a passion for protecting brands on the Internet. She also advises clients on other intellectual property matters, contract negotiations, and brand protection in general. She was project manager for the previous sunrise registrations in the .EU, .ASIA, .TEL and .CO top-level domains. Ms. Folens earned a Masters in Law from Vrije Universiteit Brussel and a Masters in Intellectual Property, Trademark Law from Katholieke Universiteit Brussel.

Moderator: Thomas O'Toole, Bloomberg BNA
Thomas O’Toole is Managing Editor of Bloomberg BNA’s Electronic Commerce & Law Report™, coordinating global coverage for daily and weekly print and online publications on domain name policy, internet governance, digital copyright and related cyberspace legal issues since 1996. Mr. O’Toole is admitted to the Maryland State Bar. He earned a J.D. from Wayne State Law School in Detroit and a B.A. from the University of Michigan in Ann Arbor.

Mr. O’Toole writes regularly on domain name and cyberspace legal issues at the Bloomberg BNA E-Commerce and Tech Law Blog,

This program’s CLE-credit eligibility varies by state. Bloomberg BNA is an accredited provider in the states of New York*, California, Pennsylvania, Texas and Virginia, and most other jurisdictions grant CLE credit on a per-program basis. At this time, Bloomberg BNA does not apply directly to the states of Florida, Rhode Island, Montana and Hawaii although credit is usually available for attorneys who wish to apply individually. Additionally, the following states currently do not grant credit for Bloomberg BNA OnDemand programming: Arkansas, Ohio, Nebraska, and Delaware. All requests are subject to approval once the live webinar has taken place or the customer has viewed the OnDemand version. Please contact the Bloomberg BNA accreditations desk if you have specific questions that have not been addressed.

*Bloomberg BNA is an accredited provider in New York for experienced attorneys only.

Hardship Policy
For information regarding Bloomberg BNA’s Hardship Policy, please visit the Continuing Education Information page.

Individual programs, subjects, and formats may not receive credit in some states and there may be specific rules regarding who may earn credit or the maximum number of credit hours that may be earned with specific formats. For specific questions, contact your state MCLE regulatory entity for specific questions about your MCLE rules or visit the American Bar Association’s website for general information on accreditation.

If you have further questions regarding a specific state or how to file for CE credit, please contact Bloomberg BNA customer service at 800-372-1033 and ask to speak to the CLE Accreditation Coordinator or send an email to