New domain suffixes rich for profiteers

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The new Internet domain suffixes arriving next year will bring fresh legal headaches for marketers who must protect their brand names and trademarks online.

Legal experts say marketers' exposure to "cybersquatters" registering Web sites with other companies' corporate and brand names will skyrocket with the new suffixes. Also, domain names are now available in foreign languages and in 243 different countries, vastly increasing such opportunities.

"The frontier for cybersquatters has increased exponentially," said Doug Wood, executive partner with Hall Dickler Kent Goldstein & Wood, New York, an Internet-law expert.

He advises clients to buy all variations and related versions of their corporate and brand names for all the new suffixes, just like they did for dot-com, and prepare to challenge cybersquatters in courts around the world.

"With the new suffixes, squatters will come back and set up in Costa Rica, so anti-squatting laws will be worthless in the U.S.," he warns.

The risk to marketers has "expanded in new directions; now you have to worry about people illegitimately using your business name in more places, and the burden will be on marketers to protect themselves," said James Rosini, an intellectual-property attorney with Kenyon & Kenyon, New York.

Lawyers carp that although the Internet Corporation for Assigned Names and Numbers created much-needed real estate when it announced seven top-level domains to be introduced next year, including "info," "biz," and "pro," it has not established clear guidelines for resolving trademark disputes over the new domains.

Such disputes are resolved by the World Intellectual Property Organization in Geneva. (The WIPO recently ruled that singer Madonna's domain name belongs solely to her, because it is her trademark.)

But Internet domain-name trademark disputes can drag on for months, and there are many gray areas about what a U.S. brand name might mean in a foreign country where it could be considered generic, and therefore not exclusive, lawyers say.

"The process of protecting your brand name by tying up all the relevant domain suffixes is a lot more complicated than meets the eye," Mr. Wood said. "Few people realize that ICANN has not mandated any standardized system for resolving disputes if two entities claim rights to a brand or trademark name."

Intellectual-property attorneys are urging corporations with valuable brands to secure their brand names with the new commercial suffixes as soon as they become available, plus any variants including likely misspellings and negative-sounding similar names such as (your brand)

It is expected that the registries offering the "biz," "info" and "pro" suffix domains will give marketers at least 30 days to claim their right corporate, brand and trademark names, but it is uncertain how marketers can protect their brand names in hundreds of foreign countries.

The domain-name jockeying has spurred at least one dot-com start-up into action: launched a service last month called Snap-Back, offering 24-hour, year-round monitoring of corporations' Internet domain names, for a fee of $35 per year for each domain name.

The service promises to notify owners of any attempt to steal a domain name by fraudulently submitting documents to change ownership or otherwise sabotage a domain name. The service also notifies domain owners of accidental deletion or cancellation of registered Web-site names. (Many well-known companies' domain names have temporarily expired because the company failed to renew the annual registration fee.)

Anyone who misses out on snaring a sought-after domain name can subscribe to SnapNames' free Snap-Shot service, which promises to notify subscribers when a requested domain name becomes available.

Copyright December 2000, Crain Communications Inc.

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