Category Archives: Domain Names

Amazon’s Inability To Register Domain Name .Amazon Is An Interesting Case Study For New gTLDs

Do you want your company to control .app or .restaurant? Applying to operate a generic top-level domain (gTLD) isn’t for the faint of heart.  Although several hundred companies ponied up the $185,000 application fee for over 1,900 total gTLD applications, that’s only the first stage in the process.  Once filed, ICANN reviews each application for financial, technical, and operational competence, ensuring that each applicant has the financial wherewithal, technical savvy, and a comprehensive plan to safely operate the gTLD registry for at least the length of the initial ten-year contract term.

If an application passes muster, there are… More

Is .XYZ The Next .COM? You Might Be Surprised.

ICANNMost of our readers are now familiar with ICANN’s new generic top-level domain (gTLD) program, which saw over 1,900 applications from various entities seeking to operate new top-level domain name registries.  Most of these applications were for true gTLDs such as .web, .law, .book, and .family.  But about a third of the applications, referred to as “.Brand TLDs,” consisted of trademarks (many famous and well-known marks), including .canon, .fiat, .youtube, and .pfizer.  Each applicant paid several hundred thousand dollars per application (including ICANN’s $185,000 application fee!) and, if awarded the… More

ICANN Top-Level Domain Name Opportunities and Risks

ICANNICANN’s new generic top-level domain name (gTLD) program has introduced opportunities and risks for companies, and probably not in equal measure.  Several weeks ago, we posted some guidance  regarding steps all brand owners should be taking to secure their valuable trademarks in connection with the launches of the new top-level domain names.  More

5 Steps To Protect Your Brands in the New gTLD Regime

ICANN

The time is upon us. After years of anticipation, lobbying for delays and more robust trademark protections, and otherwise steeling themselves against the oncoming tide of new, generic top-level domain names (gTLDs), brand owners are faced with the reality of ICANN’s far-reaching program: the first new gTLDs have been “delegated” — received final approval from ICANN for use and availability in the domain name system.

These newly-delegated gTLDs include .guru, .clothing, .ventures, .bike, .camera, .equipment, and .gallery, and others are expected to be delegated weekly… More

Protect Your Brands in the New Domain Name Regime: The Trademark Clearinghouse Is Open for Business

ICANN

New generic top-level domain names (gTLDs) such as .fun, .law, and .money have been in the works for a very long time, and the first batch may be just around the corner.  ICANN recently published a “hypothetical” timeline that pins the first top-level domain delegation date (the date the gTLD becomes active) as September 5, 2013.  Whether this date is ICANN’s wishful thinking or not, the new gTLDs are coming, and maybe as early as this fall.  With the first delegations in sight, this is… More

Domain Name Update: Trademark Clearinghouse to Launch in March

 

As we have discussed at length, over the next couple of years several hundred new generic top-level domain names (gTLDs) such as .family, .home, and .toys are expected to be introduced into the domain name system.  The majority of these domains will be “open” in nature, meaning they will be open to the public for registration of second-level domains.  On the bright side, this means that I, for instance, can finally register such highly desirable domain names as joshjarvisisagreat.lawyer or joshjarvisisreally.cool.  Unfortunately, it also means that… More

Ron Paul Seeks To Liberate RonPaul.com….From the Hands of Ron Paul Supporters?

Former U.S. Congressman and presidential candidate Ron Paul, polarizing political figure and active member of the Libertarian Party, is no stranger to conflict, or taking full advantage of intellectual property rights to solve his problems. So it comes as no surprise that he has turned to the Uniform Domain Name Dispute Resolution Policy (UDRP) to wrest the domain names ronpaul.com and ronpaul.org from those who, he alleges, are using the domain names in bad faith, for commercial gain, by trading on the value of his famous… More

Reveal Day Popularity Contest: The Most Common gTLD Applications

As we discussed last week, today is ICANN’s “Reveal Day,” and all of the new top-level domains and their applicants are available for the public to review. All businesses should review this list to determine whether any of the proposed strings presents risks or opportunities.

The applied-for strings appear to be a pretty even mix between .brands and .generics, with a few geographic terms thrown in for good measure. As expected, heavy-hitters like Google, Amazon, Microsoft, Yahoo!, and Apple (but surprisingly not Facebook or Twitter!) are on board with varying… More

The Impending Domain Name Explosion: Why Brand Owners Must Pay Attention on “Reveal Day” June 13

After years of preparation and a decidedly rocky start to ICANN’s New gTLD Program due to a glitch in the gTLD application system, the applications are in, and ICANN will soon begin evaluating the TLD candidates. First, though, comes the fun part: June 13, 2012 is the new “Reveal Day,” when all of the gTLD applications and applicants will be posted by ICANN for the world to see.

This date is important for several reasons. First, while several TLD applications have already been revealed by the applicants themselves, from… More

New gTLD Update: All Systems Are…Suspended?

As part our continuing coverage of ICANN’s New gTLD Program, we had planned a post regarding the close of the gTLD application window and the imminent unveiling of the new top-level domain applicants and their respective applications on April 30 — colloquially known as “Reveal Day.” However, due to an unfortunate glitch in ICANN’s TLD Application System that reared its ugly head on April 12 — the date the application window was scheduled to close — that process has been temporarily interrupted. According to ICANN’s TAS… More

Foley Hoag to Host Upcoming INTA Roundtable: gTLDs: Status, Process and How is It Working?

We have covered ICANN’s New gTLD Program at great length on this blog.  If you’d like to discuss the new gTLDs and the myriad issues presented by their introduction face-to-face, Foley Hoag is hosting a roundtable luncheon, presented by the International Trademark Association (INTA), on April 4, 2012 from 12:00PM to 2:00PM at our Boston office.

Topics to be discussed include:

  • Current gTLDs and anticipated changes.
  • Application/Registration process.
  • Who should be involved in the decision?
  • Trademark challenges in enforcement, infringement and counterfeiting.
  • Registering brands as second level domain names in the new gTLDs?
  • Watch… More

Welcome to the New Regime: the New gTLD Application Window Launches

A subject of regular discussion here at the Trademark and Copyright Law Blog, the application window for ICANN’s New gTLD Program opens today, over continued vigorous opposition from brand owners and the U.S. Congress. The application window, which runs from today through April 12, 2012, is the only time in which interested parties can apply to operate a new .brand or .generic top-level domain registry, at least for the foreseeable future. While ICANN plans a second (and probably a third, and a fourth…) round of gTLD applications, the timing and the details are still very much… More

New gTLD Hearing, Round 2: A Critical House, But to What End?

After the Senate Committee on Commerce, Science and Transportation hearing on ICANN’s new gTLD Program on December 8, the House Energy and Commerce Committee’s Subcommittee on Communications and Technology held a similar hearing this morning. Returning witnesses were Dan Jaffe, Executive Vice President of the Association of National Advertisers (ANA), Fiona Alexander, Associate Administrator of the U.S. National Telecommunications and Information Administration (NTIA), and Kurt Pritz, SVP at ICANN. Joining them were Joshua Bourne, President of The Coalition Against Domain Name Abuse (CADNA), Thomas Embrescia, CEO of Employ Media (operator of the .jobs TLD), and Anjali… More

Opponents of New gTLDs Criticize ICANN at Senate Hearing

As we discussed, last week the Senate Committee on Commerce, Science, and Transportation held a full committee hearing on ICANN’s domain name expansion, perhaps in part to address CRIDO’s recent actions to stall the gTLD program. The following summary of the hearing was prepared for the American Bar Association by James L. Bikoff, David Heasley, and Philip Marano of Silverberg, Goldman & Bikoff, LLP, and is reprinted with permission.

As you know, yesterday the U.S. Senate Committee on Commerce, Science and Transportation held a hearing to "examine the merits and implications of [the new gTLD] program and… More

The Domain Name Deluge: What In-House Counsel Need to Know About ICANN’s New gTLD Program

On Monday, December 12 at 12:30 p.m. EST, the Northeast Chapter of the Association of Corporate Counsel presents The Domain Name Deluge: What In-House Counsel Need to Know About ICANN’s New gTLD Program.  J. Scott Evans, Senior Legal Director, Global Brand & Trademarks, YAHOO! Inc. will join me to explore ICANN’s upcoming introduction of new top-level domain names, including a discussion of domain name basics, an overview of the New gTLD Program and the application process and timeline, and a review of what companies should be doing to traverse the rocky terrain of potential opportunities… More

Upcoming Events: Senate Hearing on the gTLD Expansion

For those of you following, breath bated, developments regarding ICANN’s New gTLD Program, the U.S. Senate Committee on Commerce, Science, and Transportation is holding a full committee hearing on the domain name expansion on December 8 at 10:00 AM ET in 253 Russell Senate Office Building, and also via webcast. Witnesses have not yet been announced. A similar hearing was conducted earlier this year by the House Committee on the Judiciary, which was certainly exciting but which ultimately led to little. Now that the gTLD train is barreling forward, more excitement should be in… More

From the .XXX Files: Porn Industry Giants Sue Over New Domain Name Registry

The .xxx domain name registry was approved by ICANN and is now taking applications via your friendly neighborhood domain name registrar, so you would be forgiven for thinking that opponents of the .xxx domain are ready to move on and deal with the new regime.

To the contrary, pornography giants Manwin Licensing International (operator of YouPorn, Pornhub, xTube, and the various Playboy websites) and Digital Playground (one of the five biggest pornography studios, according to Wikipedia) are decidedly not aroused amused by ICM Registry and its .xxx starlet. The two companies filed suit last week against… More

CRIDO Coalesces to Take On ICANN In Last-Ditch Effort to Delay New gTLD Program

With the ICANN New gTLD Program train out of the station and running full speed ahead, there has been little hope among trademark owners of a further delay. The newly minted Coalition for Responsible Internet Domain Oversight (CRIDO) aims to change that. CRIDO, comprised of the Association of National Advertisers (ANA) and 87 major national and international business associations and companies, including Coca-Cola, Ford, and GE, is “committed to aggressively fighting ICANN’s proposed program, citing its deeply flawed justification, excessive cost and harm to brand owners, likelihood of predatory cyber harm to consumers and failure to… More

MAFIAA Fire Potentially Meets Its Match

Back in May, we wrote about MAFIAA Fire, a browser plug-in created by anonymous coders to counteract the government’s efforts to shut down copyright-infringing web sites by seizing the domain names.

Can You Ever Have Too Many Domain Names?

My partner Dave Broadwin, a business attorney and the head of my firm’s Emerging Enterprise Center, recently blogged about registering variations of one’s domain name as a strategy to prevent cybersquatting and trademark conflicts on the internet. He recommended that companies consider taking the following steps:


1. Register with the most popular top-level domains. Obviously, .com domains are the most popular by far, followed by .net and .org. You might also register domain names in the .biz registry, and in the .info, and .us registries. The Columbian registry (.co) is also making a big push to be… More

New gTLDs: A New Website for the New Regime

Now that ICANN’s new gTLD program is moving full steam ahead, ICANN has launched a new informational website as part of its global awareness campaign to promote the potential benefits of new gTLDs (the potential harm caused by the gTLDs is left to us commentators). The new website is intended to serve as a one-stop shop for potential and eventual gTLD applicants and other interested parties, and provides a bevy of information related to the new gTLD program, including:

Update: .XXXempt Your Valuable Brands Starting September 7

In May, we reported that brand owners would have the opportunity to "block" domain names in the .xxx top-level domain registry that correspond to valuable brands. This opt-out opportunity will be available beginning September 7, 2011 during the "Sunrise B" phase of the .xxx rollout, and trademark owners concerned about their marks used in connection with .xxx domain names should consider participating.

The .XXX Launch

The .xxx launch consists of several phases, as follows:

Sunrise. The .xxx sunrise phase actually involves two concurrent phases — Sunrise A and Sunrise B. Sunrise A is for applicants within… More

The Real Web 2.0? ICANN Approves New gTLD Rollout

After many years and despite ongoing criticism and concerns from governments and intellectual property interests, the ICANN Board voted yesterday to approve the launch of the new gTLD program, discussed earlier on this blog here and here. The vote paves the way for a dramatic increase in the number of top-level domain names, by hundreds in the near term and likely thousands over the next decade, and will allow organizations to own their own top-level domain names (e.g., .foleyhoag or .lawyers) and operate their own Internet registries.

New gTLDs will not be introduced right away. First, ICANN… More

Trademark Owners: Consider Pre-Reserving Your .XXX Domains Now!

After a lengthy and contentious approval process, the Internet Corporation for Assigned Names and Numbers (ICANN) recently entered into an agreement with ICM Registry to delegate the new .xxx top-level domain (TLD). The .xxx domain, intended to serve as an Internet "red light district" (despite being strongly opposed by many in the adult entertainment community itself), will likely go live later this year. In the meantime, ICM Registry has opened a "pre-reservation period" for interested members of adult entertainment industry, and for trademark owners in other industries.

As with ICANN’s planned introduction of numerous generic top-level domains (gTLDs) starting… More

RIAA Not Keen On Hearing The .MUSIC

While brand owners have taken issue with the vast trademark implications of ICANN’s proposed (and at this point, likely) expansion of the domain name space to add countless new generic top-level domains (gTLDs) to the Internet, one organization has raised the specter of increased copyright infringement pursuant to domain name expansion.

The Recording Industry Association of America (RIAA), the trade organization representing the music labels and artists well known for its aggressive tactics designed to counter music piracy, has expressed concern over ICANN’s gTLD program, and specifically possible "music themed" gTLDs. In a January 5, 2011 letter… More

gTLD Update: New Draft Applicant Guidebook Released and Open for Public Comment

The new generic top-level domain names (gTLDs) are closer than ever. As previously discussed, ICANN’s Draft Applicant Guidebook Version 4 (DAG4) has been released. The guidebook, a comprehensive manual for potential gTLD applicants, explains the gTLD application process from filing to delegation (activation of the new domain), and outlines the various rights-protection mechanisms (RPMs) required to be implemented by registries for brand owners (initially discussed here). As expected, the DAG4 adds detailed provisions for the trademark clearinghouse — a comprehensive database of trademarks and owners that is intended to aid in rights protection — as well as… More

.CO Domain Names Are Coming — Should You Care?

Colombia is known for its chief exports of coffee, petroleum and coal. It may also soon be known for its country code top-level domain name (ccTLD), .co. In many people’s minds, the abbreviation "co." stands for "company," "corporation," or "commercial," and the .co registry, .CO Internet SAS, is heavily marketing this domain as a legitimate alternative to .com domains for businesses and individuals. If .CO Internet has its way, .co will be the new .com. Of course, whether the .co domain will catch on remains to be seen, but trademark owners should be aware of some preliminary steps they… More

New gTLDs Still On Track Despite Trademark Concerns

For some time now, the Internet Corporation for Assigned Names and Numbers (ICANN) — the governing body of many of the inner workings of the Internet — has planned to expand the domain name space. Currently, domain names are limited to 27 generic top-level domains (gTLDs) — including the popular .com, .net., and .org — and a number of country code top-level domains (ccTLDs). ICANN’s proposed expansion would allow for the introduction of unlimited new gTLD registries — for instance, .lawyers, .film, or .baseball. Presumably, a majority of these new registries will be open to the public for registration… More