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Pros, cons of changes in domain naming

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Indiana Lawyer Focus

In January of 2012, the Internet Corporation for Assigned Names and Numbers will open the door for a new wave of generic top-level domain names. Traditional gTLDs like .com and .org will still exist, but soon, almost any word may be registered as a domain name. While the change may help some companies create stronger online identities, questions remain about whether pursuing a gTLD will be worth the cost and effort.

Reasons for the change

Charlie Meyer, head of the trademark practice group at Woodard Emhardt Moriarty McNett and Henry, explained the rationale behind the new development in domain names.
 

meyer-charlie-mug.jpg Meyer

“One of the reasons new gTLDs are being introduced is the perception that existing gTLDs such as .com have become scarce and some companies are fighting over the limited resources of a particular domain name,” he said.

ICANN says that it has introduced this change to support more global marketplace competition, allowing entrepreneurs, businesses, governments and companies to have their own top-level domains. But with an application fee of $185,000 and ongoing associated costs, the new gTLDs aren’t for everyone.

Chuck Fox, an intellectual property attorney for Maginot Moore & Beck, said that until ICANN announced this change in June, anyone could set up a .com domain for as little as $15 in the course of a lunch break. But with the low cost and ease of registration, domain names were often disputed after the fact, through ICANN’S Uniform Domain Name Dispute Resolution – a sometimes lengthy, costly and frustrating process for anyone who believed they were entitled to a particular domain name.

“With the current system, they sort of put the cart before the horse,” Fox said. “The new generic system that ICANN has proposed is sort of the opposite.”

ICANN’s new approach to gTLD registration comes with a thorough evaluation and public comment process, which in theory guarantees that when entities are granted a gTLD, it will not conflict with an existing gTLD. Because of the application fee, and the requirement that any gTLD applied for must be activated, people who have made money in the past by hoarding and reselling inactive domain names – or cybersquatting – will likely be shut out by the new process.

“The idea is: we’re gonna make it difficult to get these things,” Fox said. “Some guy sitting in his garage is not going to be cybersquatting.”

However, the new registration process will have no effect on the existing domain name system and its accompanying problems.

Pros and cons

Once the application process closes in April 2012, all applications will be posted for public comment. That means if a business is hoping to secure a gTLD for a product that is in development, competitors can find out what that product is by reviewing existing applications.

Fox recommends that corporate attorneys keep an eye on applications to watch for any gTLDs that could cause concerns about trademark infringement. He also recommends studying in advance how to formally object to gTLDs.


walsh-tom-mug.jpg Walsh

Tom Walsh, a partner with Ice Miller’s intellectual property group, said it’s hard to predict what will happen when ICANN opens the three-month registration process in January.

“One issue – probably the most prominent issue – is a particular word can be used for multiple companies,” Walsh said. “Think, for example, of ‘delta’ – there’s Delta airlines, and there’s Delta faucets.”

Neither company is in violation of the other’s trademark, because each offers distinct services. But two companies cannot register the same gTLD. When and if that happens, a company could file a “string dispute resolution,” if it believes the name – or string – of the other gTLD would be easily confused with its own gTLD or would lead to general confusion.

A gTLD can be as specific as “.hitachi,” or as vague as “.sports,” and whether the more generalized names will stand as gTLDs remains to be seen.

“If you’re taking a generic term like .sports, a wide category with a lot of things that people are interested in, from what I can tell they’re not necessarily going to prevent those top-level domains from being granted,” Fox said. But in this hypothetical scenario, another entity could challenge the application.

Securing a gTLD like .sports could be a good source of revenue for companies that have the finances and technical resources to operate as a registrar. The owner of .sports becomes a registrar, and if the domain name has a broad appeal, Meyer said, other companies might wish to register as a second level, or sub-domain under that gTLD (like .rowing.sports). The owner of the gTLD would set the fee for sub-domains.

Any business or entity serving as a registrar is responsible for sub-domains registered under its gTLD and should therefore make sure sub-domains aren’t infringing on trademarks. Fox said that attorneys who represent businesses applying for a gTLD should understand how to tackle trademark dispute resolutions, requests for information from law enforcement agencies, methods for handling spammers and all of the other complicated problems that can arise for registrars.

Meyer said that the introduction of new gTLDs does raise the risk of more trademark infringement issues.

“To some extent, standards and procedures to block inappropriate trademark use are being written into the implementation rules for new domain names,” Meyer said. “For example, we are currently in a window (expiring on Oct. 28) to file requests to exclude people from registering .xxx domain names using someone’s registered trademark.  Similar exclusion options may be implemented into other new gTLDs. Additionally, companies in certain industries may have priority to obtain top-level or second-level domain names associated with their industry.  For example, established companies in the adult entertainment industry have priority to obtain .xxx domain names.”

Taking the plunge

Fox recommended a few key steps attorneys should take if helping a client apply for a gTLD, and that begins with knowing the exact names a client is interested in pursuing. And if attempting to register a trademark, the company should be able to prove it owns the mark.

“Make sure your client has the financial means to pay for the registration and can show proof of ongoing financial solvency to satisfy ICANN during the application process,” Fox said. “The registration and yearly fees will only be part of the expenses required to run a gTLD.”

A company must also be able to demonstrate that it has the technological and legal infrastructure to run a gTLD, as well as proper hardware.

Assuming everything goes according to plan and there are no challenges to the application, Fox said it would be at least nine months from the initial filing before a company could begin using its new gTLD.

“We’re waiting to see just how this is going to play out – what sort of top-level domains are going be snapped up, how popular they’re really going to be,” Walsh said. “It wouldn’t have gotten this far if there hadn’t been some demand for these top-level domains.”•

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  1. On a related note, I offered the ICLU my cases against the BLE repeatedly, and sought their amici aid repeatedly as well. Crickets. Usually not even a response. I am guessing they do not do allegations of anti-Christian bias? No matter how glaring? I have posted on other links the amicus brief that did get filed (search this ezine, e.g., Kansas attorney), read the Thomas More Society brief to note what the ACLU ran from like vampires from garlic. An Examiner pledged to advance diversity and inclusion came right out on the record and demanded that I choose Man's law or God's law. I wonder, had I been asked to swear off Allah ... what result then, ICLU? Had I been found of bad character and fitness for advocating sexual deviance, what result then ICLU? Had I been lifetime banned for posting left of center statements denigrating the US Constitution, what result ICLU? Hey, we all know don't we? Rather Biased.

  2. It was mentioned in the article that there have been numerous CLE events to train attorneys on e-filing. I would like someone to provide a list of those events, because I have not seen any such events in east central Indiana, and since Hamilton County is one of the counties where e-filing is mandatory, one would expect some instruction in this area. Come on, people, give some instruction, not just applause!

  3. This law is troubling in two respects: First, why wasn't the law reviewed "with the intention of getting all the facts surrounding the legislation and its actual impact on the marketplace" BEFORE it was passed and signed? Seems a bit backwards to me (even acknowledging that this is the Indiana state legislature we're talking about. Second, what is it with the laws in this state that seem to create artificial monopolies in various industries? Besides this one, the other law that comes to mind is the legislation that governed the granting of licenses to firms that wanted to set up craft distilleries. The licensing was limited to only those entities that were already in the craft beer brewing business. Republicans in this state talk a big game when it comes to being "business friendly". They're friendly alright . . . to certain businesses.

  4. Gretchen, Asia, Roberto, Tonia, Shannon, Cheri, Nicholas, Sondra, Carey, Laura ... my heart breaks for you, reaching out in a forum in which you are ignored by a professional suffering through both compassion fatigue and the love of filthy lucre. Most if not all of you seek a warm blooded Hoosier attorney unafraid to take on the government and plead that government officials have acted unconstitutionally to try to save a family and/or rescue children in need and/or press individual rights against the Leviathan state. I know an attorney from Kansas who has taken such cases across the country, arguing before half of the federal courts of appeal and presenting cases to the US S.Ct. numerous times seeking cert. Unfortunately, due to his zeal for the constitutional rights of peasants and willingness to confront powerful government bureaucrats seemingly violating the same ... he was denied character and fitness certification to join the Indiana bar, even after he was cleared to sit for, and passed, both the bar exam and ethics exam. And was even admitted to the Indiana federal bar! NOW KNOW THIS .... you will face headwinds and difficulties in locating a zealously motivated Hoosier attorney to face off against powerful government agents who violate the constitution, for those who do so tend to end up as marginalized as Paul Odgen, who was driven from the profession. So beware, many are mere expensive lapdogs, the kind of breed who will gladly take a large retainer, but then fail to press against the status quo and powers that be when told to heel to. It is a common belief among some in Indiana that those attorneys who truly fight the power and rigorously confront corruption often end up, actually or metaphorically, in real life or at least as to their careers, as dead as the late, great Gary Welch. All of that said, I wish you the very best in finding a Hoosier attorney with a fighting spirit to press your rights as far as you can, for you do have rights against government actors, no matter what said actors may tell you otherwise. Attorneys outside the elitist camp are often better fighters that those owing the powers that be for their salaries, corner offices and end of year bonuses. So do not be afraid to retain a green horn or unconnected lawyer, many of them are fine men and woman who are yet untainted by the "unique" Hoosier system.

  5. I am not the John below. He is a journalist and talk show host who knows me through my years working in Kansas government. I did no ask John to post the note below ...

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