Are You Ready for New Generic Top-Level Domains?Print
With hundreds of new gTLDs to police, CIOs will need a strategy to protect the company’s trademarks and other intellectual property. Here are some guidelines.
With so many decisions to make and deadlines to track, it is critical to designate filing and management responsibilities in a company. The leaders could include in-house counsel, IT managers, marketing managers and outside experts.
Identify the desired TLDs for active and defensive registrations. The pending applications can be found at the ICANN site. By matching these TLDs with TMCH records, CIOs will be able to identify and obtain potential sunrise registrations.
Companies must also consider terms—such as generic names, geographic designations or future brands—for registration during the “land rush” period when the new gTLDs open for general registration.
Finally, monitor the launch of the new gTLDs to avoid missing critical dates and opportunities.
The goal of enforcement is to prevent cyber-squatting and infringement on domain names when the new gTLDs are in use. An effective enforcement strategy results in less lost business, confusion and damage to company goodwill, as well as the ability to maintain a realistic budget.
The key strategies for implementation include:
· Set parameters for action and work flow. Try to decide in advance what type of uses might merit objections or other actions. Some uses may be more damaging than others. Having a set plan for workflow may improve efficiency and lower costs by saving time, reducing confusion about responsibilities and avoiding second-guessing.
· Monitor IP claims and watch services. One of the benefits of the TMCH is the ability to obtain IP claim notices if someone seeks a matching domain name in a new gTLD. Separate watch services will provide similar services. An effective enforcement plan requires attention to these notes at regular intervals to avoid delay and lost opportunities for early objections.
· Send demand letters. Many disputes can be resolved by sending an email demand, particularly when the applicant is acting in good faith and the demand is supported by solid rights and based on a valid objection.
· Negotiate purchase if appropriate. Not all domain name disputes merit aggressive litigation. Domain names supported by bona fide use may justify payment for transfer. However, be careful not to establish a reputation for payment or it will encourage future cyber-squatting.
· Take legal action when needed. The final step in an enforcement plan involves dispute resolution. That doesn’t necessarily mean a lawsuit. The past two decades of the Internet have yielded several more-efficient enforcement options:
1. All domain name registration contracts in the new gTLDs include use of the Uniform Domain-Name Dispute-Resolution Policy (UDRP). This a contractually mandated form of expedited arbitration based on written submissions, with a decision normally issued within a few months.
2. All new gTLD agreements include adherence to Uniform Rapid Suspension System (URS), another expedited arbitration procedure that can be used to take down an infringing domain name in a few weeks.
3. Cyber-squatting violates federal trademark law and can be challenged in federal court. Potential recovery includes statutory damages of up to $100,000 per domain name.
These changes to the Internet have been in the works for years, yet many of your competitors may not know about them or simply ignore them.
There are hundreds of gTLD applications demanding your attention right now, and others in your industry are already taking action. By following the guidelines in this article, you’ll be able to manage these changes efficiently and effectively.
Mark Partridge is founder of Partridge IP Law, a Chicago-based law and IP strategy firm. He has worked in intellectual property law for more than 30 years and was named one of the top trademark lawyers in the 2012 edition of The International Who’s Who of Trademark Lawyers.
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