Web Extension Changes and What They Mean to You and Your Company

Tired of .com and .org web address extensions?   Have you ever wished that your company could have its own dedicated web address that ends in your company name or certain type of product or service?   

Welcome to the future!   
At their June 2008 meeting, The Internet Corporation for Assigned Names and Numbers (ICANN) introduced sweeping changes to web address extensions.  Currently, users have a choice of 21 top level domain names from which to choose – the most recognized being .com, .org and .info.  According to the new proposal, applicants will be able to apply to ICANN to self-select their own domain name extensions.  Some examples of the anticipated extensions include: .travel, .coke, .sport and .nyc.  Brands, generic words, company names, trademarks and city name designations are expected to be some of the most requested web address extensions.
 
ICANN will be accepting applications for web address extensions for the second quarter of 2009, with a likely cost for the new names to begin in the low six figures.
 
Concerns 
Some of the concerns voiced by Internet proponents and consumer advocates include the potential for the addition of hundreds or thousands of suffixes, which could lead to consumer confusion, fraud, phishing, domain tasting and cybersquatting.   

Additionally, several companies and organizations have spent millions of dollars lobbying for this change, only now to be confronted with several entities competing for the same suffix.  As a recent article in The New York Times  indicates, the group Connecting.nyc has been lobbying for this change since 2001, only now to be confronted with another group vying to secure the rights to .nyc.  In the event that multiple parties are vying for a mark that is neither trademarked nor otherwise protected, ICANN has indicated that any disputes will be resolved through an auction process.
 
ICANN has also announced that trademarked names will NOT automatically be prohibited from use.  Rather, ICANN has issued a statement that for those who object to the use of a trademarked name, there will be an objection-based mechanism for a trademark owner’s arguments to be considered.  This practice will spawn a new hurdle for individuals and entities in the protection of trademarks, copyrights and other intellectual property assets.
 
ICANN intends to implement these changes over time, and will solicit comments through a public review process.
 
What this means to you and your business 
As is often the case in Internet developments, this announcement comes with positive and negative repercussions for businesses and individuals.  On the positive front, this development may allow for further brand identification and protection.  Securing a web extension that recites a company name or trademark could help increase consumer use and consumer name recognition for your goods and services.
 
On the negative front, businesses and individuals will need to add another level of trademark due diligence.  As ICANN has stated, web extensions containing trademarks will not be automatically defaulted to the trademark owner.  Trademark owners will bear the brunt of protection and due diligence, and ultimately be responsible to police web suffix use through objection proceedings.
 
How we can help 
Prince Lobel has developed a specialty in the protection of our clients’ trademarks, copyrights and intellectual property assets.  Our team can help prepare and file applications for the new top level domain names on behalf of our clients, helping to secure these new and cutting-edge web extensions.
 
Additionally, we can provide services to object to the use of the new domain name designations to prevent the unauthorized use of our client’s intellectual property, to help prevent the dilution of intellectual property, to prevent palming off practices of certain web users and competitors and help curtail the actions of cybersquatters.
  
The protection of your intellectual property and web presence is as essential to the success of a product and service as developing the brand itself.  We are prepared to assist in the creation and protection of one of your company’s most valuable assets, as well as guide you in light of the ever changing Internet landscape. 

For more information on the ramifications of this change or for a review of the security of your intellectual property assets, please contact Peter J. Caruso II  of Prince Lobel’s Media and Intellectual Property Groups at 617 456 8034 or pcaruso@princelobel.com