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How to protect your brand this year

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Brand owners in the know await Oct. 15, 1997, as Internet Halloween -- it's trick or treat time.

The treat is the seven new top-level domains that will compete with .com, .net and .org. The trick will be claiming your exclusive turf in one or more of the new domains and stopping would-be cybersquatters from taking a second-level domain name similar to an existing brand.

The proposed new domains are:

  • .firm: for businesses or firms

  • .store: for businesses offering goods to purchase

  • .web: for entities emphasizing activities related to the World Wide Web

  • .arts: for entities emphasizing cultural and entertainment activities

  • .rec: for entities emphasizing recreation/entertainment activities

  • .info: for entities providing information services

  • .nom: for those wishing individual or personal nomenclature

    To keep it interesting, there are already moves in place to change some of the names. For example, it's a good bet that .store will be changed to .shop. In addition, it is rumored that some companies in Europe are not thrilled with .firm since so few European companies use the term.

    Registration process is easy

    Either way, if you want to register in one of the new domains, the registration process will be fairly straightforward.

    During the upcoming months, new registrars will be established throughout the world. Applications for status as a new registrar are being processed in the next two months.

    It is anticipated that registration will be online much as it is with InterNIC today. Fees and additional services offered by the competing registrars will vary, so a would-be domain registrant will want to shop around to see which registrar is offering the best deal.

    With the introduction of competition into the domain name registration process, the field is open to all sorts of pro-registrant offers. Most importantly, however, it is anticipated that some registrars will take requests before the switch is thrown and the new domains become active.

    There will be no guarantee, however, of getting a preregistered name simply because of early registration.

    While there is some controversy over whether the new top-level domains will go active on Oct. 15, the odds are they will. But on whatever date the new domains become active, all of the registrars will send their preregistration requests to a central database -- all at one time.

    First to file wins first round

    According to the plan, nanosecond technology will somehow separate the first filed with the central database from the second one.

    The first to file will win -- at least the first round, anyway.

    If you are unfortunate enough to come in second, you can challenge the winning registrant's right to the domain name provided you can show you have superior rights, based on either trademark or other theories of intellectual property.

    If the winner has trademark rights of its own, however, your challenge will be for naught because if both registrants have equal rights, then the first to file wins. Nonetheless, through a newly adopted process administered in Geneva, Switzerland, a disgruntled trademark owner who misses out on getting a domain name registration may file an online challenge with a so-called Administrative Domain Name Challenge Panel, or ACP.

    While the final procedures are not yet in place, a source close to the management of the ACPs has indicated that so long as the challenge is filed within 30 days of the initial registration, the challenged domain name will be suspended until priority of ownership can be determined by the challenge panel.

    The standards to be applied by a challenge panel to determine priority of ownership can be found at http://www.gtld-mou.org.

    Two approaches to take

    Meanwhile, the owner of a well-known international trademark has two approaches if it is not interested in registering a new domain but wants to prevent others from doing so under its brand or ones similar.

    First, rather than filing a registration, a trademark owner can monitor the published lists of newly registered domain names to determine if any conflicting registrations have been filed. It is likely companies will offer such watching services well before the new domains go active.

    If there are any potential conflicts, the trademark owner can file a challenge with an ACP just as it could if it had lost out in the race to be the first to register. Again, this process will be online, and upon filing the domain name will be suspended.

    Second, the owner of a well-known international trademark can file a separate request to prohibit registrations under its brand name in one or more of the new domain names unless specifically authorized by the trademark owner.

    That all assumes, of course, that the panel reviewing the request agrees that exclusivity should be granted at all.

    Douglas J. Wood is a partner with the New York- and Los Angeles-based law firm Hall Dickler Kent Friedman & Wood LLP, and is legal counsel to the Coalition for Advertising Supported Information and Entertainment, a joint venture of the Association of National Advertisers and the American Association of Advertising Agencies that focuses on the Internet. He can be reached at dwood@halldickler.com.

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