Preparing for Hurricane ICANNBy J.Whittle, C.Rhebergen, J.Hance, J.Yates Print
Businesses need to prepare for an onslaught of new domain names--and the trademark problems they could bring--like homeowners need to prepare for a hurricane.
A storm of new domain names is brewing at the Internet Corporation for Assigned Names and Numbers with projected landfall as early as the first quarter of 2010. If ICANN implements its proposed domain name architecture, hundreds of new generic top-level domain names (gTLDs) will flood the marketplace. Like homeowners preparing for a hurricane, trademark owners should track the storm, board up trademarks, create a disaster supply kit and prepare to clean up any damage.
Track the storm. Currently, there are 21 active gTLDs (including .com, .net, .org and .gov) that identify Internet space the way zip codes identify real space. Like street addresses, lower-level domain names (such as google.com) can pinpoint a specific cyberspace location within a gTLD. Under the proposed initiative, however, new gTLDs may include brand-specific domain extensions such as .mycompanyname, geographic-centric domain names such as .texas and generic domain extensions such as .software.
Since the previous expansions of new gTLDs, Web-based communities, hosted services and Web applications (i.e., Web 2.0) have transformed how individuals and organizations access and share information. Many Web 2.0 communities, for example, now offer membership to businesses and provide personalized community Web addresses (such as community.com/companyname) so that members can promote their community presence.
To develop an effective storm plan, brand owners should follow the new gTLD proposals, monitor the category level of the brewing storm, and understand the potential impact to their businesses and trademarks.
Board-up trademarks. ICANN is currently seeking comments on various trademark protection measures to help brand owners board up their windows. All trademark holders should immediately seek registration for any valuable unregistered trademarks, both domestically (with the U.S. Trademark Office) and internationally.
Then, all registered trademarks—previously registered and recently obtained—should be filed with a proposed Trademark Clearinghouse, which, if adopted, will provide a database of validated trademarks utilized by new gTLD registries to implement either of the following:
• a “Trademark Watch” service to notify trademark owners of any new domain name registrations matching their trademarks and to notify registrants that matching trademark registrations exist; or
• a “Sunrise Period” during which trademark owners could register domain names matching their trademarks prior to the general registration on a new gTLD.
Before the ICANN storm hits, brand owners should join Web 2.0 communities, secure brand-related domain names and register their trademarks.
Create a disaster supply kit. To weather a storm, it’s best to stock up on supplies—whether batteries or gTLDs—before they become scarce, and hence more valuable. Currently, the .com space is perceived to be scarce. In the first half of this year, seven .com domain names were purchased for sums of more than $1 million each. In contrast, the .biz space is not scarce. Of the 109 million domain names registered under the top-five most popular gTLDs, only 2 million (1.8 percent) use the .biz gTLD.
Regardless of the ultimate success of new gTLDs, brand owners should stock up on any suitable new gTLD for an initial one-year term. For example, an Internet jeweler might register mycompany.jewelry, as well as mycompany.community.
Brand owners should direct these new gTLDs to appropriate sections of their Website and use standard traffic-monitoring tools to determine whether to renew the initial registrations. Given the typically low cost to register and the potentially high value associated with certain gTLDs, a bundle of registrations for a limited term are like spare batteries—cheap yet possibly valuable.
Prepare to clean up any damage. Various dispute-resolution policies are available to help trademark holders fend off cyber-squatters. These include the proposed Uniform Rapid Suspension System (under which a domain name can be frozen for the life of the registration, only to resolve to a specific error page); ICANN’s existing Uniform Domain-Name Dispute-Resolution Policy (under which a domain name registration can be canceled, transferred or otherwise changed); and a lawsuit alleging cyber-squatting, trademark infringement or other causes of action (under which various types of damages may be sought).
Although .com domain names may retain their value for years to come—in which case this storm may end up be-ing only a tropical depression—brand owners would still be wise to prepare for Hurricane ICANN.
The authors are members of the Intellectual Property practice group in the Houston office of the international law firm Bracewell & Giuliani LLP. Jeffrey S. Whittle is a partner and head of the firm’s Intellectual Property practice group, Constance Gall Rhebergen is also a partner, and Jonathon K. Hance and Jay Yates are associates.
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