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
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
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.
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
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
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
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.
Follow us on Twitter @ReutersLegal | Like us on Facebook