Lawyers gear up for rush on domain names - but firms fail to register
18 June 2012 | By Sam Chadderton
First new gTLDs delegated; non-Latin gTLDs; a new product to defend your marks; and changes to ICANN Registry Agreements
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The scramble for new domain names is likely to bring a rash of work for specialist IP, media and technology lawyers.
There are almost 2,000 applications for generic Top Level Domains (gTLDs) from businesses that have had to register with ICANN if they want to try to buy the rights to the web suffix.
There are 60 countries competing, with almost half of the applications from North America, just over a third from Europe and 16 per cent from the Asia-Pacific region.
Law firms have decided to watch from the wings, with none of the magic circle tempted to register a domain name. The gTLDs of .law, .legal and .lawyer have attracted the interest of domain name holding companies, perhaps with the aim of selling them on at a profit in the future.
A similar holding company has bid for .attorney and .associates, with two applicants vying for .bar although neither are ambitious UK chambers.
No one has applied for .abs and despite .city having three applicants, they are not law firms.
Marks & Clerk partner Campbell Newell said the fact there are 2,000 applications for gTLDs shows the demand for customized domain names is “very much there”.
“It has not been, as some speculated last year, a damp squib,” he added. “As commerce continues to migrate online, and the internet embeds itself into more and more aspects of everyday life, brand and reputation are becoming more important than ever before. So it makes sense for companies and organisations to seize the opportunity to distinguish themselves like this.
“Nonetheless, not all applications on this list will represent a proactive desire to incorporate a branded domain name into marketing strategies. Some applications will have had a defensive motivation, such as businesses and organisations wishing to ensure that a certain domain name cannot be used – or abused – by others.”
Hogan Lovells partner David Taylor has submitted applictions on behalf of Ford - for .ford and .lincoln - and for the US broadcaster Fox - .fox.
He said: “In essence we’re witnessing the largest virtual land grab in the history of the internet. With some 2,000 new gTLDs, we’ll see innovative new space and vast possibilities for other language sections of the internet and web.
“We’ll also likely see unscrupulous third parties take advantage of this new space to usurp companies’ rights and rip off consumers. ICANN has sought to put strong protection mechanisms in place, but no one knows if they’ll be enough in the new era we’re joining.”
Hogan Lovells was the first law firm to be officially accredited by ICANN as a domain name registrar and Taylor has been closely involved in the process for more than a decade. He has helped develop Rights Protection Mechanisms (RPMs) for new gTLDs.
He added: “Many big brands, have seized this unique opportunity and also applied to run their own piece of the internet. It will not come around again for a few years, and as ever the prime real estate may have already gone by then. Because of this, many more companies and brands will also be watching closely to see if their decision not to apply was the right one - and that will all depend on what their competitors have done. In this fast-moving internet world we live in, to lose three to five years to a competitor could mean the difference between make or break for some companies.”
Multiple applications for the same domain name, such as .app will pit mega-firms like Google and Amazon against each other, possibly leading to lawsuits against ICANN from those that miss out.