By Jeffrey L. Michelman
The Internet Corporation for Assigned Names and Numbers (ICANN) opened the application window on January 12, 2012 for its New Generic Top Level Domain (gTLD) program. This process allows successful applicants to create their own equivalent of a “dot com.” For example .lawyer, .bookkeeper, .toyshop, .womansfashion, .investing, etc. Then the owner of that top level domain can choose to run its own domain registry business, such as Network Solutions or GoDaddy, and charge a fee to others wanting to use the new top level domain.
This move by ICANN could potentially raise the number of available gTLD domains from its current level to over 1,000 new options. Simply put, the Internet is changing and there are key dates all brand owners should keep in mind:
- April 12, 2012: New gTLD application window closes.
- Early May, 2012: Public Application Information will be posted to ICANN’s website.
- From April through November: Application Review, Initial Evaluation and an Objection Filing period will occur.
Brand owners should not ignore what is going on in the Domain Name game and lose a competitive advantage in the Internet marketplace. Businesses would be foolish to fail to review the posted applications to monitor for possible infringement or any other potential competitive harm. The should discuss the findings with counsel to identify the harm and develop a remedy.
Any dispute resolution proceedings must be based upon a complaint brought by one of the following four types of entities, and filed with the specific organization contracted to handle the dispute:
- String Confusion Objections – objector must be a current TLD operator or gTLD applicant in the same round
- Legal Rights Objections – objector must be a legal rights owner whose rights are being infringed
- Limited Public Interest - objections may be filed by any member of the public
- Community Objections – objector must be an established institution clearly defined with a community
- October, 2012: ICANN expects to release the details and procedures for trademark owners to file their registered marks within the Trademark Clearinghouse.
- Early 2013: Timeframe for first new registries to go live.
Now is the time to determine whether your business could be helped by having a new generic top level domain attached to your URL — and whether you could get it if you do want it.
If you and counsel believe the new gTLD is worth it, get that application on file quickly to meet the April cut-off date.
Lastly, be sure to schedule a prompt review of the new gTLDs so timely objections can be filed.
Posted by Attorney Jeffrey L. Michelman, who concentrates his practice on Trademarks and Copyright matters as well as e-Commerce and Social Media issues.
02/7/12 1:15 PM
Business Law, Intellectual Property | Comment (0) |
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New Top Level Domain Name Application Period Opens: Will There Be Another as Successful as “.COM”?
By Jeffrey L. Michelman
Politicians constantly speak of the small business entrepreneur as the backbone of America, and in fact many of our largest companies today started out as small businesses. Thus, it is surprising that the same politicians who boast of American small business would allow passage of “The America Invents Act.” It is likely to impact small businesses and certainly the individual garage/basement inventor in ways that the politicos haven’t yet considered.
Prior to this new Act, the law in the United States was that the first person to invent a new patentable product is the one who deserved to get the patent, thus giving that person the 20 years (from filing) a monopoly accorded to inventors who successfully achieved patents protection. This meant that there was time to do further research and development and prototype testing; there was time to raise money for achieving patent protection; and the small business owner had every opportunity to be first in line with rights to the monopoly granted under the patent statute. But now that standard has been changed by law. We are witnessing a transition from a first-to-invent system to a first-to-file system used in many foreign countries. Thus an inventor who races to the Patent and Trademark Office (PTO) to file an invention application may well be the one who successfully obtains the monopoly of patentability over a party who actually came up with the idea and invented the product first.
What’s the difference, you say. The difference is very plain to those who understand the patent system. Large corporations have in-house, or at their disposal, plenty of patent lawyers standing by ready to file for patents any new invention or twinkle in the eye of management that seems to be inventive and to get it on file quickly as a provisional patent application which requires limited filing of actual claim elements or filing as a full blown utility patent. The search for money in order to obtain patentability is not an issue for the large corporation. Thus by the time the small business entity perfects the invention and then seeks the money for the expense of patentability, the small business entity may lose in the battle for its place in line giving big business the opportunity to be successful in keeping the small business and, of course, others out of the marketplace once granted the monopoly.
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11/11/11 2:50 PM
Business Law, Emerging Business, Intellectual Property | Comments Off |
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Is The New Patent Statute Patently Unfair to Small Business?
By Jeffrey L. Michelman
October 28, 2011 is the Deadline to Protect Your Trademarks from the New .XXX Domain
In the Jurassic age of the Internet, it seemed that only some nerds (now mostly wealthy) understood the full potential of Internet commerce. Large and small businesses appeared to have failed to grasp the importance of web sites and a proper Domain Name for such sites as well as its use for email addresses. Both have blossomed across the world and become a gateway to new methods of selling products and promoting brand recognition and goodwill.
Unfortunately, many of the nerds became pirates, taking the names of big well known brands as their own Domain Names and then holding those names for ransom. For a fee the company that never thought or sought to register a Domain Name for itself found they had to hire counsel to get their names back.
In those days, the law was behind the technological advancements and (as with most things technical) failed to anticipate the problems for business. Rather we lawyers had to show the Federal and State legislatures as well as the courts what action was appropriate. Lawsuits flew from antique word processors and physically delivered to a court’s inbox.
How did such a thing happen in the tech savvy end of the last millennium? Simple, business failed to keep up with the developments in the Internet and its opportunities for new forms of commerce. And the lawyers who predicted dire consequences of this lack of attention went unheeded and unnoticed.
Today the cyberpiracy epidemic has dwindled to a trickle and filing lawsuits on line has become commonplace. There are a host of statutory prohibitions, remedies and even newly created quasi judicial bodies to battle the few pirates left sailing. One such entity created to “help promote the natural expansion of the net” is an international body known as the Internet Corporation for Assigned Names and Numbers, or ICANN.
Now, as legal problems were quieting down, this international power that directs Internet Domain Name usage has decided to stir up the pot with the issuance of two new policies that, if again unheeded by business, could cause as much upheaval, costs and litigation as occurred when Domain Names were new.
ICANN first approved a rapid and unprecedented policy allowing the expansion of the number of generic Top-Level Domains (gTLDs). Business owners by now are familiar with the .COM, .NET, .ORG, and .EDU specifically approved Top-Level Domains as well as those indicating a specific country. Domain registrants were free to register almost any sequence prior to the Top-Level Domain, but had few options when choosing a Top-Level Domain.
With ICANN’s new program, the Top-Level Domain Name space has been opened to allow the registration of nearly any combination of letters, including brands or other terms, such as .bank, .Lawyer, .plumber, .boeing, .nordstroms, .stlouis, etc. While the full impact of this expansion is uncertain, it is clear that regardless of their intent to participate in the new program, business owners will need to reevaluate the way they currently monitor and enforce their brands on the Internet.
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09/22/11 3:29 PM
Business Law, Emerging Business, Intellectual Property, Litigation | Comments Off |
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The Domain Name Game: Category 4 Internet Storm Warning for Business
