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Domains: Are we heading off to new shores?

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After two years of intensive discussions, new generic Top Level Domain Names (gTLDs) will most likely be introduced in 2011.
The implementation is certainly expected to satisfy trademark owner’s marketing needs. Undoubtedly, it will also create new challenges.
Shall trademark holders apply for their own gTLD? Which opportunities and threats will that imply? How will the application process work and how much will it cost? Will trademark holders still feel protected by the IP law?
And what about Internationalized Domain Names (IDNs) in different languages: Will they contribute to the development of the Internet community?

These and other questions will be addressed in our Domain Special outlining

Part II

Show Articles of Part I

New gTLDs: the Web is about to get bigger. Are you read...


Chris Round, Middletons, Australia
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Chris Round, Middletons, AustraliaThe article will outline different key points:
- New rules being proposed by the Internet Corporation for Assigned Names and Numbers (ICANN) will open up the registration of new generic Top-Level Domains (gTLDs) for example .middletons, .melbourne and .web.
- Under each of the potentially thousands of new gTLDs, new "second-level" domain names will also become available for registration. This has serious implications for trade mark owners seeking to prevent domain name misuse.  read more

New gTLDs: a threat or an opportunity?


Marie-Emmanuelle Haas, Casalonga Avocats, France

Marie-Emmanuelle Haas, Casalonga Avocats, FranceWhen ICANN announced the launching of the new gTLD program in Paris in June 2008, the French newspaper Les Echos published a provocative article, stating that ICANN would enable the creation of new extensions like “.amour” (love) or “.haine” (hate). More than two years later, the debate is still open and the final version of the applicant guide book is still under discussion.
ICANN explains on its website www.icann.org that “the expansion of the generic top-level domain (gTLD) space will allow for a greater degree of innovation and choice.  read more

Internationalised Domain Names country code


Karen Hayne, Addisons, Australia

Karen Hayne, Addisons, AustraliaAs noted in our FocusPaper ‘Domain Name System Revolution Part 1: Generic Top Level Domain Names’ published 1 November 2010, the implementation of Internationalised Domain Name country code Top Level Domains (IDN ccTLDs) which commenced this year is the second tranche of the revolutionary changes currently being made to the domain name system.
In conjunction with the new generic Top Level Domain (gTLD) program, which will soon allow companies and organisations to apply for and operate their own personalised gTLDs containing their brand or ... read more

Concept of “bad faith” in domain name registrations


Paul Steinhauser, Arnold + Siedsma, The Netherlands
Bartosz Sujecki, Arnold + Siedsma, The Netherlands

Paul Steinhauser, Arnold + Siedsma, The Netherlands, Bartosz Sujecki, Arnold + Siedsma, The NetherlandsIn its decision of 3 June 2010, in the case C-569/08, the ECJ gave some rules regarding the examination of a bad faith registration of a .eu Top Level Domain. The question whether a domain name registration was in bad faith must be examined taking all relevant facts of the case into consideration. This short article evaluates this decision of the ECJ.

The .eu Top Level Domain was introduced by the Regulation (EC) No. 874/2004 laying down public policy rules concerning the implementation and functions and the principles governing the registration (further: the Regulation). The Regulation followed the system that was adopted in the setting up and regulation of earlier Top Level Domains, including the so called ‘ sunrise period’ of 4 months, during which holders of prior rights recognized or established by national and/or Community law and public bodies could apply for a registration of a domain.  read more

New generic Top Level Domain Names in Lithuania


Reda Zaboliene, Metida Law Firm of Reda Zaboliene, Lithuania
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Reda Zaboliene, Metida Law Firm of Reda Zaboliene, LithuaniaIn Lithuania domain names can be registered freely by any interested person. General rule is “first come first served”. In quite many cases the domain name registrants understand this rule as imperative. Thus the clients, who’s trademark rights the domain name infringes, must additionally try explaining the domain name owner that the rule applies only when the registration doesn’t infringe earlier rights of other persons.
Another thing – the domain name registrars do not provide information on the domain name owner unless a plaint is filed in the court.  read more

Domain names and the Canadian presence requirements


Benoît Trotier, Joli-Cœur Lacasse, Canada
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Benoît Trotier, Joli-Cœur Lacasse, CanadaIn Canada, the Canadian Internet Registration Authority (« CIRA ») is the entity in charge of operating and managing the «.CA » country code top level domain name. It has enacted registration and dispute policies governing the .CA domain name, both based upon the fundamental concept of a «Canadian Presence Requirement» («CPR»). This concept stems from the mandate entrusted to CIRA, to the effect that .CA domain space should be developed as a key public resource for the social and economic development of all Canadians.  read more

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K&L Gates
Chris Round
Chris Round
525 Collins Street
VIC 3000 Melbourne
Australia (AU)
Tel +613 9640 4364
Fax +613 9205 2055
chris.round@klgates.com
www.klgates.com

On 1 January 2013, Middletons merged with global law firm K&L Gates. With over 2,000 lawyers in 46 offices across 5 continents, our clients now have access to outstanding commercial legal advice no matter their location around the world.

K&L Gates represents leading global corporations, growth and middle-market companies, capital markets participants and entrepreneurs in every major industry group as well as public sector entities, educational institutions, philanthropic organizations and individuals. Our practice is a robust full market practice — cutting edge, complex and dynamic, at once regional, national and international in scope.

Our intellectual property lawyers seamlessly work for our clients in creating, developing, and leveraging patents, trade marks, copyrights, trade secrets, and other rights to protect intellectual property assets as valuable business assets. Our intellectual property lawyers practice in virtually every technical field imaginable.

We advise clients how best to protect their intellectual property. We also counsel clients on infringement and validity opinions regarding intellectual property. In addition, we help clients acquire intellectual property from third parties, including necessary due diligence, patent and trade mark portfolio evaluation, and IP valuation.

METIDA Law firm of Reda Zaboliene
Reda Zaboliene
Reda Zaboliene
Gyneju str. 16
LT-01109 Vilnius
Lithuania (LT)
Tel + 370 5 2490830
Fax + 370 5 2490833
patent@metida.lt
www.metida.eu

METIDA Law firm of Reda Zaboliene provides legal services for Lithuanian and foreign clients in the field of intellectual property, corporate, commercial, real estate, contract law and in other law spheres, represents natural and legal persons in civil cases.
METIDA is a leading law firm in intellectual property. Due to longstanding experience and accumulated knowledge we provide legal help to our Lithuanian and foreign clients professionally and operatively. Influential int. publishers & organizations evaluated our practice: According to European law guide Chambers Europe 2008, METIDA is one of the best Lithuanian IP law firms. Patent attorney and attorney-at-law Reda Zaboliene is appreciated by clients because of efficiency, effectiveness and operativeness, they said.
The Office of Harmonization for the Internal Market (OHIM) marked our law firm as the representative of Lithuanian applicants with the largest number of European community patent and design applications filled.

Joli-Coeur Lacasse Avocats
Micheline Dessureault
Micheline Dessureault
1134 Grande-Allée Est, suite 600
G1S 1N5 Québec (Québec)
Canada (CA)
Tel +1 418 681 7007
Fax +1 418 681 7100
micheline.dessureault@jolicoeurlacasse.com
www.jolicoeurlacasse.com

Founded in 1983, our firm has expanded considerably since its creation, placing it amongst one of the most important law firms in the province of Quebec, Canada.

Counting almost 100 lawyers, our firm has offices in Quebec City, Trois-Rivières and Montreal and has, amongst others, departments in intellectual property, international business law, business law, taxation, real estate law and insolvency and enforcement of security.

It is known for both the quality and affordability its legal services. Our accomplishments are in large part due to the competent, creative and service-oriented professionals who lend their hand to helping their clients and strive to go above and beyond demand.

Our team of professionals in the intellectual property area is renowned for its services and publications as well as for its conferences and seminars. Its members, whether they are lawyers, trademark agents or technicians, have a strong experience in Canada as in foreign countries. Counting on a sound network of contacts throughout the world, they are fit to assist you on intellectual property matters.

Our spheres of activity in Intellectual Property:
- Protection and management of intellectual property portfolios
- Trademarks
- Copyright
- Information technologies and Internet Law
- Patents and industrial designs
- Know-how
- Artistic heritage
- Licenses/technology transfer
- Research and development

Our services in International Business Law:
- Business accompaniment
- Legal and political analysis
- Creation of a subsidiary or branch
- Mergers and acquisitions
- Strategic alliances and partnerships
- Commercial agencies/sales offices
- Distribution
- Joint venture and co-development
- Exportation and importation
- Legal domiciliation
- National and international taxation
- Real estate
- Negotiation and drafting of various other international contracts
- Transnational dispute settlement, mediation, arbitration

We invite you to visit our website for further information regarding our firm and its specialists.

Micheline Dessureault, Lawyer and Trademark Agent, Director of the Intellectual Property and International Business Law Departments

Jean-François Nadon, Lawyer and Trademark Agent