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AIPLA IP Practice in Japan Committee Mid- Winter Pre-Meeting January 22-23, 2012, Las Vegas, NV Speaker: Ron Harris www.harrispatents.com ICANN’s Generic.

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Presentation on theme: "AIPLA IP Practice in Japan Committee Mid- Winter Pre-Meeting January 22-23, 2012, Las Vegas, NV Speaker: Ron Harris www.harrispatents.com ICANN’s Generic."— Presentation transcript:

1 AIPLA IP Practice in Japan Committee Mid- Winter Pre-Meeting January 22-23, 2012, Las Vegas, NV Speaker: Ron Harris ICANN’s Generic Top Level Domain Name Proposal

2 Top Level Domain History 1984.com,.net,.org,.edu,.gov,.mil 1998 ICANN was created to manage domain names aero,.biz,.coop,.info,.museum,.name,.pro (non-ASCII) secondary domains allowed (for.jp) asia,.cat,.jobs,.mobi,.tel,.travel,.xxx 2010 internationalized country codes (IDN ccTLD) Jan. 12, 2012 applications* for.[anything!] * use of first ones by 2013 © AIPLA

3 ICANN Board Vote to Expand gTLDs June 20, 2011 voted to end most restrictions on the generic top- level domain names (gTLD) from the 22 currently available. Companies and organizations will be able to choose essentially arbitrary top level Internet domains. The use of non-Latin characters (such as Cyrillic, Arabic, Chinese, etc.) will be allowed in these new gTLDs. ICANN began accepting applications for new gTLDs on January 12, © AIPLA

4 ICANN’s Expectations The initial price to apply for a new gTLD will be $185,000 (subject to bidding by multiple applicants), with an annual fee of $25,000 (plus staff and computers to run associated registry) for a 10-yr minimum. $47,000 for Applicant Support Program selectees, which includes developing country applicants and some TM owners (???) Limited to about 1000 new gTLD per year ICANN expects that the first batch of new gTLDs will be operational at the beginning of “We have provided a platform for the next generation of creativity and inspiration. Unless there is a good reason to restrain it, innovation should be allowed to run free.” © AIPLA

5 Industry Expectations ICANN's rules require a gTLD registrant to protect trademark and other rights, provide monthly reports to ICANN, host Whois services, comply with hardware and other technical requirements, and provide a three- year financial/business plan that establishes that funds to run registry will be available. Entertainment and financial services brands are most likely to apply for new gTLDs for their brands. Industry analysts predicted 500–1000 new gTLDs, mostly reflecting names of companies and products, but also cities and generic names like.bank and.sport. © AIPLA

6 Opposition to “Dot Anything” Following the vote to expand gTLDs, many trade associations and large companies, led by the Association of National Advertisers, formed the Coalition for Responsible Internet Domain Oversight. Opposes the expansion of gTLDs, citing “its deeply flawed justification, excessive cost and harm to brand owners.” AIPLA: “prices unconstrained by ICANN…legal expenses and domain acquisition costs of defensive registrations and IP claims will not be offset by potential economic or informational value to either registrants or Internet users.” - David Hill IPO also opposes © AIPLA

7 Opposition to “Dot Anything” (2) December 9, 2011 statement to US Congress, National Restaurant Association vice president Scott DeFife stated, "Even beyond the financial toll the gTLD program will exact on millions of U.S. businesses, the Association believes that ICANN’s program will confuse consumers by spreading Internet searches across hundreds or even thousands of new top-level domains." Esther Dyson, the founding chairperson of ICANN, who wrote that the expansion "will create jobs [for lawyers, marketers and others] but little extra value.” © AIPLA

8 Tracking/opposing new gTLDs April 27, 2012, ICANN will publish all of the gTLD applications after which third parties will have a seven-months to file objections. Several unofficial lists have been established which track new gTLD applications, such as.Nxt, New TLDs.tv, Valideus and Registries.tel. Four separate and distinct grounds for objection, namely, "legal rights"; "string confusion" (the gTLD is confusingly similar to another proposed gTLD); morality and public order objections; and objections based on the interests of a particular community. © AIPLA

9 Tracking/opposing new gTLDs (2) A legal rights objection can be raised by applicants and non-applicants alike, and must be based on a claim to valid rights in the string of characters that comprise the gTLD. "Legal rights" extend beyond trademark rights, but ICANN's definition makes evident that protecting trademark rights is its primary concern. Neutral ICANN panel will determine whether the applied-for gTLD takes advantage of the objector's trademark or reputation, impairs the distinctiveness of the objector's trademark (akin to a dilution claim under U.S. law) or otherwise creates a likelihood of confusion. "String" confusion, on the other hand, can be raised only by another gTLD applicant/registrant, and only certain defined entities or communities may assert the public order/community objections. © AIPLA

10 Tracking/opposing new gTLDs (3) Uniform Rapid Suspension System - Suspend use of a “dot anything” domain (such as Nike preventing another’s registration of “.nike”) Register your brand(s) for preferential rights to be registered as a secondary domain (such as “coke” in “coke.cola” if “.cola” is approved) [Clients ought to assign staff to look out for registration of relevant gTLDs like “.cola”, “.drink”, “.forsale”, etc. and then add their marks to this Trademark Clearinghouse to have chance (1) to so register during a “Sunrise Period” before it is available to others and (2) use Trademark Claims service to be notified if another registers within 1st 60 days of availability. Arbitrate to change ownership (via old URDP procedure) © AIPLA

11 Cost-Benefit Analysis $200,000-$2,000,000 + operating expenses in, e.g., India (Bangalore), China (Dalian), or Nigeria(!) is a significant financial risk to advertise infringing items for two years. “Redelegation" of a non-exclusive gTLD gives ICANN the right to transfer to a successor the gTLD and its registry - at ICANN’s sole discretion and despite a brand owner's objection. Reduced costs for registries in developing countries? Role/Funding of Emergency Back-End Registry Operators in case of registry operation failure? © AIPLA

12 Possible Steps Key will be to watch out for new generic top level domains related to your products/services and register these brands accordingly in the Trademark Clearinghouse for each of these gTLDs to gain preference Update Anticybersquating Protection Act (ACPA) ICANN details at IRT conclusions report-trademark-protection-29may09-en.pdf 349-page applicant guidebook © AIPLA

13 Thank you. Questions or Comments: Ron C. Harris, Jr. The Harris Firm - IP Counseling, Prosecution & Litigation 922 N STREET, NW, SUITE 101 WASHINGTON, DC PHONE: FAX: WEBSITE: © AIPLA Disclaimer: This presentation is not intended to be a source of legal advice for any purpose. Neither receipt of information presented hereby, nor any or other electronic communication sent to The Harris Firm or its lawyer(s) in response to this presentation will create an attorney- client relationship. No user of this presentation should act or refrain from acting on the basis of information included in this presentation without seeking legal advice of counsel in the relevant jurisdiction. The Harris Firm expressly disclaims all liability in respect of actions taken or not taken based on any contents of this presentation.


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