Emergence of the New Generic Top-Level Domains (gTLD): Revolutionizing Trademark Protection
In establishing the .BRAND New Generic Top-Level Domains (gTLDs), The Internet Corporation for Assigned Names and Numbers (ICANN) has created a scarce resource of immense commercial value and an opportunity for infringers and counterfeiters. Already there are bitterly contentious issues. Amazon Inc. was not awarded the ‘.amazon’, Ralph Lauren lost ‘.polo’ brand to the Polo Community; and Coach Inc. lost ‘.coach’ since it is a generic term.
Where more than one company has a legitimate trademark interest in a particular .BRAND TLD, such as in different countries or product categories, the resolution of disputes by ICANN is complex and ultimately may be decided by auction. However, the losing party may register a variation of the mark which, of course, could lead to confusion of consumers. There is a possibility for domain names to be shared by holders of the same trademark. For example, winterthur.ch web site presents with a portal page on which you can choose to visit the website of Winterthur City, Winterthur region, Winterthur tourism, or Winterthur Insurance.
Registering entire portfolios in the TMCH may be prohibitively expensive. With the launch of hundreds of new TLDs and thousands of new, second-level domains, trade-mark owners must review their portfolios and decide which must be prioritized for brand protection. Companies, need to understand the changes, assess and manage the risks, and determine new strategies to protect and advertise their brands against other legitimate and illegitimate brands.
In a two hour, LIVE Webcast, a panel of thought leaders and practitioners assembled by The Knowledge Group will discuss the latest, contentious, and most significant issues regarding the New Generic Top-Level Domains (gTLDs): .BRAND Revolutionizing Trademark Protection in 2016?
Key issues that will be covered in this course are:
- New Generic Top-Level Domains (gTLDs)
- Why Buy a gTLD
- Risks and Benefits
- Securing a gTLD
- ICANN Registry Operation Contract
- The '.brand' TLD Dispute and Solutions
- Recent Disputes
- Facebook Inc v. Radoslav
- US civil remedy: Anti-cybersquatting Act
- Legal Rights Objection and String Confusion Objection
- Trademark Clearinghouse and Rights Protection
- Uniform Rapid Suspension (URS) System on Domain Name Disputes
- Best Practices
David E. Weslow, Partner
Wiley Rein LLP
- New gTLD program in general
- How it evolved
- Application process and issues
Change to rules on (i) closed generics and (ii) .brand spec. 13 and spec. 9
- gTLD Objection Proceedings (High Level)
- Launch process and status (overview of launch issues, e.g., reserve lists, pricing, etc.)
- New second level procedures for trademark owners (High Level)
Ariel E. Ronneburger, Attorney
Cullen and Dykman
New procedures for TM owners
- Trademark clearinghouse and implications for:
- Claims Periods
- New URS and recent cases
- Implications for UDRP proceedings
Nathaniel W. Edwards, Attorney
Lewis Roca Rothgerber
- Registration statistics on the number of registrations across the new gTLDs.
- Abusive registry and registrar actions (.sucks or .xyx/NetSol giveaways)
- Closed generics (e.g., .food)
- Pseudo community registries (e.g., .halal, .kosher) (David to chime in)
- Legal rights and string confusion objections
- SLD registration strategies in light of gTLDs
- SLD enforcement strategies
- Registry Anti-abuse policies
- ICANN compliance
David, Ariel, Nathaniel
- The Next Round
- Why pursue a gTLD
- Risks and Benefits
- ICANN Registry Operation Contract
Who Should Attend:
- IT Lawyers
- IP and Copyright Attorneys & Consultants
- Copyright Lawyers
- Trademark Lawyers
- Technology Attorneys
- Licensing Executives
- IT Officers
- Chief Information Officers
- Web Developers
- Technology Firms and Others
- Third Party Administrators
- Public and Private Companies
- Other Interested Professionals
David Weslow is a partner at Wiley Rein in Washington DC and has counseled clients on the implications of ICANN’s new gTLD program since its inception in 2005. He represented clients in pursuit of over 30 gTLD registry applications filed with ICANN and in prosecution or defense of over 20 gTLD objection proceedings. Mr. Weslow represents a wide range of companies from around the world in developing and implementing strategies for protection of trademarks and copyrights online in light of ever-evolving changes to the Internet landscape.
David Weslow is a partner at Wiley Rein in Washington DC and has counseled clients on the implications of ICANN’s …
Ariel E. Ronneburger is an associate in the Commercial Litigation Department of Cullen and Dykman LLP. She focuses her practice on a range of fields, including intellectual property, energy and utility related matters, and banking litigation. She played a major role in helping the firm become an agent with the Trademark Clearinghouse, and has advised clients with regard to registration of trademarks with the Trademark Clearinghouse, securing new top-level domains, and protecting their trademarks from misuse with these new domains. She has also represented clients in copyright and trademark infringement matters.
Ms. Ronneburger currently serves as the Chair of the Nassau County Bar Association Intellectual Property Committee. She has a B.S. in Neurobiology and Behavior from Cornell University, a M.A. in Neuroscience from Stony Brook University, and earned her law degree from Hofstra University.
Ariel E. Ronneburger is an associate in the Commercial Litigation Department of Cullen and Dykman LLP. She focuses her practice …
Mr. Edwards protects his clients’ brands and original content. His practice is focused on trademark and copyright prosecution, enforcement and litigation, with emphasis on protecting trademarks and copyrighted content in cyberspace. Mr. Edwards advises clients on new gTLD issues and risks, and has represented clients in legal rights and community objections filed under the New gTLD Dispute Resolution Procedure. He has also represented clients in dozens of successful UDRP proceedings, and frequently takes down infringing or defamatory content from websites and social media.
Mr. Edwards’ work has been published in the Sports Business Journal, IP Litigator and Intellectual Property Today, and he has been quoted on IP issues by Bloomberg.com.
Mr. Edwards protects his clients’ brands and original content. His practice is focused on trademark and copyright prosecution, enforcement and …
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About Wiley Rein LLP
Founded in 1983, Wiley Rein is a dominant presence in the nation’s capital. With more than 250 lawyers, the firm has earned international prominence by representing clients in complex, high-stakes regulatory, litigation, and transactional matters. The firm has dramatically expanded and evolved since we first opened our doors 32 years ago. Many of the firm’s lawyers and public policy advisors have held high-level positions in the White House, on Capitol Hill, and in federal agencies, including the U.S. Department of Defense, the U.S. Patent and Trademark Office, and the U.S. Department of Justice. Many of our attorneys have active high-level security clearances that allow them to quickly “read in” to matters when there is a need to access classified materials. The Legal Times has noted that the firm “represents as perfect a merging of public policy and corporate America as exists in Washington.” In addition, Wiley Rein generously gives back to the community, providing significant pro bono legal services and charitable contributions to more than 450 local and national organizations every year.
About Cullen and Dykman
Cullen and Dykman LLP has been serving institutional and individual clients in the New York metropolitan area since 1850. Our commitment to quality, costeffectivelegal services has helped us build longterm relationships with clients in all types of industries. We offer a wide range of comprehensive legal services, including banking, corporate, energy, real estate, litigation, labor, municipal and trust and estates. Our offices are strategically located to best serve our clients. We have full service offices in Garden City (one of the largest law offices on Long Island), Wall Street (Manhattan), Albany (New York State's capital), and
Washington D.C., as well as offices located in Brooklyn Heights and Newark, New Jersey. Our mission is to provide all of our clients — from individuals and small businesses to large utilities and financial service companies — with innovative and practical legal advice. We invite you to contact us to learn how Cullen and Dykman LLP can assist you with your legal needs.
About Lewis Roca Rothgerber
Lewis Roca Rothgerber works with individuals, organizations and companies throughout the country and around the world to develop and protect intellectual property rights here and abroad. With nearly 40 intellectual property attorneys across eight offices, the firm offers clients a full range of intellectual property representation. Lewis Roca Rothgerber successfully and cost-effectively guides its clients through complex intellectual property issues, enabling them to obtain and keep a competitive advantage. Lewis Roca Rothgerber’s lawyers also practice in the areas of complex commercial litigation, finance, tax, insurance, regulatory, government relations, and labor and employment law. Learn more at www.lrrlaw.com.