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The deluge of new Top Level Domains (TLDs) has begun! Top level domains are the ones after the dot.


-    .com

-    .org

-    .travel

-    .net

Almost 2000 new applications for TLDs were filed in 2012/13 with ICANN. One of ICANN’s many duties is to ensure healthy competition in the Domain Name System (DNS) for registrars and the adequate meeting of the changing/growing needs of consumers as the internet continues to expand in size and importance.

Certainly the huge number of acronyms developed and used in the ICANN world is some testimony to its growth and the increasing levels of separate expertise one needs to operate effectively when advising about the DNS.

After years of debate, discussion and compromise between different players in the internet space (governments; business; technical; non-commercial; registrars; registries; IP), the Board of Directors of ICANN reached a decision to open up the “root”— the actual electronic highway along which all material, data etc. travels at light speed — to an unlimited number of new TLDs including International Domain Names (IDNs) in languages that are NOT written in western (Latin) alphabets. These include Russian, Greek, Arabic, Chinese, Korean and many more around the world.

It was a difficult technical challenge to make these non ASCII domain names work properly in a system designed for English speakers by English speakers but the ICANN Board understood early on that if the DNS was to really work globally and not end up ‘fracturing’, implementation of IDNs as soon as technically possible had to be a priority. That time is now!

What does it mean? Why should you care?

Many are unaffected directly BUT if you own a business that has goodwill in a name or trade-mark there are now 100s and soon 1000s of opportunities for others to adopt your trade-mark either as a TLD or as a Second Level Domain in one of the new TLDS (i.e.  “your name.SHOP”).

Moreover, with the translation of words and marks into non English/non ASCII alphabets, monitoring the cyber marketplace against “cyber-criminals” will become more challenging than ever.

There are strategies you should be considering such as:

-    Simply thinking out your company’s real needs in the DNS.

-    Developing a cost effective internet trade-mark/domain name strategy designed for YOUR company.  In many cases this will require little effort and little or no cost. However, for those companies with international presence through sales or otherwise, some serious thought and some action may be very prudent.

A few possibilities:

1.    Registration in the new Trademark Clearing House.

2.    Looking into where you are protecting your trade-marks and domain names and to what extent a defensive position makes sense for your business.

3.    Considering registering in new IDN TLDs.

4.    Looking at monitoring options and generally keeping abreast of what’s happening in the DNS.

Finding a competent advisor who has real knowledge and experience in this field is also very important in developing and accomplishing a sensible program for your business. You can choose anyone, anywhere but make sure he/she is a real player in this arena.

Clear knowledge of trade-mark law and practice; litigation knowledge and experience; a working knowledge and experience with UDRP and CDRP; significant knowledge of, and active participation in, ICANN and its Intellectual Property Constituency) and some ccTLDs; a good knowledge of the RPMs ***(Rights Protection Mechanisms) developed for the new TLDs are all important.

The author, Jonathan C. Cohen, is Senior Partner of Shapiro Cohen, an intellectual property law firm with over 50 years experience. He has served on the Board of Directors of ICANN for 4 years, the Board of Directors of CIRA (.ca) for 2 terms, and founded the IPC of ICANN, serving also as its first President. He was also chosen as a member of the IRT, the international group of experts chosen by ICANN to develop and recommend to the Board the RPMs designed to protect trade-mark owners in the face of the coming expansion of the number of TLDS. He has spoken and written extensively worldwide on TM and DN strategy and developments for more than 15 years.

For information on placing a sponsored article on OBJ.ca, please contact Terry Tyo at 613-238-1818 ext. 268.

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