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Backlit computer keyboard, file photo. REUTERS Kacper Pempel

IP lawyers gird for trademark issues amid domain name expansion

2/5/2013 COMMENTS (0)

By Erin Geiger Smith

NEW YORK, Feb 5 (Reuters) - Intellectual property attorneys are focused on guarding against misuse of their clients' brand names and trademarks ahead of the massive expansion of Internet domain names, which is expected to begin by the end of 2013.

The expansion is forcing brand owners to decide which of their marks to actively protect, including through registering Internet address ownership themselves.

The new system, which was announced in 2011 and designed to allow more personalization of Internet addresses, allows a wide increase in the number of so-called "top-level domain names," such as .com, .org or .edu. Applicants can even seek to register for domains that end with a topic, such as .wine or .golf, or with a company name.

The number of top-level domain names is expected to leap from 22 to about 1,000 as companies, organizations and cities have applied to have their own top-level domain name, Andy Abrams, trademark counsel for Google Inc said at a conference on intellectual property enforcement held by the Practising Law Institute in New York last week.

While registration for such names seems like it would be open to Internet squatting - such as when someone other than George Clooney owns GeorgeClooney.com, for example - certain measures are in place to help ensure that doesn't happen.

The registration fee of $185,000 per top-level domain name has also served as a deterrent to would-be squatters, Abrams said. Plus, if a company mounts a successful objection to an application, the losing party gets only 20 percent of the application fee back, he said.

The Internet Corporation for Assigned Names and Numbers, a U.S. Government-approved non-profit organization that coordinates domain names, is in charge of the overhaul and has begun the process of reviewing applications for top-level domain names.

ICANN is expected to begin delegating the new top-level domain names by the end of 2013, Abrams said.

Of the 1,930 requests submitted during the application period of January 2012 through May 2012, 59 percent were for standard terms, like .shop, while 34 percent were for brands, according to statistics released in October by ICANN's Business Constituency group.

The remaining 7 percent were for community or geographical identifiers, like .Miami.

The brand applicants include the American Broadcasting Company, Bristol-Myers Squibb Co and Microsoft Corp, according to the ICANN website.

Registrants could decide if only they could use their top-level domain address or if it would be open to the public, Steptoe & Johnson attorney Brian Winterfeldt said in a telephone interview with Reuters.

Winterfeldt advises companies, including Google, on trademark and domain name issues.

APRIL MEETING

ICANN made non-confidential portions of new top-level domain name applications public last June. If companies or others think a proposed name misuses their intellectual property, they have until March 13 to object.

The names can be reviewed on the website gtldresult.icann.org.

ICANN's government advisory committee will meet in April, and representatives from different countries, including one from the United States, will discuss any governmental objections to the top-level domain names, Winterfeldt said.

Though companies must be vigilant about protection at the top level, trademark protection at the so-called second level - the part of the site address that comes before the dot and the first-level domain - is equally if not more important, Abrams said.

For example, in the Web address hello.com, hello is the second-level and .com is the first. So if a .shop is approved as a first-level domain name, Nike Inc would likely not want anyone but itself using a Nike.shop address.

The misuse of trademarks at the second-level is expected to become a big issue in IP protection. The Trademark Clearinghouse is one of various efforts to help trademark owners protect themselves with regard to implementation of the new domain names.

Under its umbrella is the trademark claims service, which allows trademark owners to register certain marks and receive notice when someone else has registered for a second-level domain name identical to the registered mark.

The clearinghouse will also oversee the so-called "sunrise period," which allows trademark owners to proactively register the complete domain names they want before a top-level domain name is launched publicly. That service is only planned to be available for the first 60 days after a new top-level domain name is launched.

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