The December 2010 meeting in Cartagena, Colombia was designed to bring ICANN closer to adoption of the proposed new gTLD program.  However, despite lengthy discussions, the ICANN Board has not yet approved the Proposed Final Applicant Guidebook as final and did not set the new gTLD application round launch date.  Currently, May 30, 2011 still stands as the likely date for opening for applications, although experts think this date may be delayed.

Many of the remaining issues revolve around trademark protection and procedures for resolving disputes among brand owners.  Currently, the proposed Uniform Rapid Suspension (URS) takes just as long, if not longer, than the Uniform Domain-Name Dispute-Resolution Policy (UDRP).  A UDRP proceeding can take as little as 35 days.  The URS, on the other hand, takes approximately 40-47 days.  This time needs to be shortened dramatically.

Further push-back comes from doubt that the benefits of the new gTLD program will outweigh the costs.

“New gTLDs will allow companies to be in charge of their own brand’s gTLD,” explains Darin Klemchuk, partner and IP trial lawyer at Klemchuk Kubasta LLP.  “This gives companies the ability to use their brand as a .BRAND top level domain, which may limit cybersquatters from laying claim to similar top-level domains.”

Nevertheless, while cybersquatting may be limited at the top-level domain level, IP owners are concerned that there could be significant increase in cybersquatting at the second level domain.  “This could result in increased need for defensive registration and higher dispute costs” observes trademark attorney, Roxana Sullivan of Klemchuk Kubasta LLP.

“Brand owners will have to worry about their mark being used in a variety of ways,” says Klemchuk.  “For example, for a company like Nike, with new regional gTLD’s, the combinations for using their trademark could look something like this: nike.dfw, nike.web, nike.paris, or nike.nike.”

“The combinations can be truly endless and brand owners will have to keep an ever increasing watchful eye on their trademarks to make sure that their marks aren’t being registered by an unauthorized party in any number of new gTLDs,” explains Sullivan.  Possible new gTLD’s include city TLDs, regional TLDs, industries such as .music or .sport, charitable TLDs such as .eco or .green, or as mentioned brand TLDs.  “This could exponentially multiply the effort required to police trademark and brand protection,” warns Klemchuk. 

About Darin M. Klemchuk

Mr. Klemchuk, an intellectual property trial lawyer, focuses his practice on patent, trademark, copyright, trade secret, and other intellectual property litigation and enforcement. In addition, Mr. Klemchuk has extensive experience representing clients in commercial and business disputes, particularly software development, trade-secret, and non-compete disputes. Named by D Magazine as one of the “Best Lawyers in Dallas,” in Intellectual Property for the third year in a row (2007-09), Mr. Klemchuk also focuses on intellectual-property licensing and technology agreements and serves as local counsel for out of state plaintiffs and defendants involved in patent, trademark, copyright, IP, and commercial litigation in the state and federal courts in Dallas, Texas. Learn more about Darin M. Klemchuk.

About Klemchuk Kubasta LLP

Klemchuk Kubasta LLP is an IP boutique law firm offering a full array of intellectual property related services, including litigation and enforcement of all forms of intellectual property, as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides legal services relating to trade secrets, unfair competition, domain names, e-commerce, privacy policies, Internet law, commercial litigation, and business litigation.  Located in Dallas, Texas, Klemchuk Kubasta LLP supports a diverse client base ranging from individuals and startups to established market-leading companies.  Through its Virtual IP Counsel^sm and Virtual General Counsel^sm programs, the firm also has experience with technology incubators and pre-first round financing technology start-ups.  Klemchuk Kubasta LLP also serves as local counsel for IP and commercial litigation cases pending in Texas, including the federal courts in the Northern and Eastern Districts of Texas.  Additional information about the firm and its attorneys may be found at www.kk-llp.com.