New York partner Robert B.G. (Red) Horowitz authored an article, "Registering Marks as Top-Level Domain Names," which was published in the November 30, 2009, edition of the National Law Journal. New York associate Tarsha Luke assisted in the research for the article.
According to Horowitz, "The Internet Corp. for Assigned Names and Numbers (ICANN) plans to issue generic top-level domain names (gTLDs) beyond the current 21 top-level domain names (TLDs) such as .com and .net. For the first time, trademark owners may use their marks as gTLDs, for example, .nike. The application process is complex and trademark owners have no guarantee that they will secure gTLDs for their marks. Trademark law strategy, however, can provide advantages during the application process."
The proposed gTLD application will establish an application submission period, expected to begin next year, states Horowitz. He goes on to describe the application process, including the:
The article goes on to state that in order "to accommodate owners of global marks seeking to prevent spurious registration of gTLDs that infringe upon their rights, ICANN will implement an 'IP Clearinghouse': a repository for trademark rights, including unregistered marks, globally protected marks, trade names and family names. It is designed to be the central entity with which all new gTLD registries, and possibly registrars, interact for a mechanism for protecting rights in a variety of marks and names."
Horowitz advises that "trademark strategies can help position a trademark owner with competing gTLD applicants and ICANN. Essentially, a company should create trademark rights for domain-name registry services to thwart competing applicants from registering and using the same or confusingly similar gTLDs and to put pressure on ICANN not to register them."
Click to read the full article: "Registering Marks as Top-Level Domain Names."