By Adam Smith
October 12 2010
While attorneys calculate how to reform their domain name services in light of the forthcoming gTLD expansion, Hogan Lovells has proved itself ahead of the curve by gaining ICANN accreditation as a domain name registrar. Ladas & Parry established its own ICANN-accredited registrar in 2001 with Ladas Domains; in contrast, the Hogan Lovells registrar function will be run from within the firm's standalone domain name practice for trademark owners. With the world's only such practice, Hogan Lovells has an even sharper edge: it will be able to service key clients better during the sunrise periods of the new domain name spaces.
The news comes as WTR analyses the results of its exclusive survey to uncover how industry is preparing for new gTLDs. A significant proportion of firms agree with Hogan Lovells that clients will require new services: the survey results, due to be published in the next issue of WTR magazine, reveal that 43% of lawyers describe new gTLDs as a "good business opportunity".
The key is to think laterally. "We're going to have a number of clients who expect specific services," says David Taylor, the partner who heads Hogan Lovells' domain name practice. Taylor notes the complexity of the expanding landscape of gTLDs, adding: "As each new registry opens with a different sunrise process, we can not only devise strategy but, as a registrar, also register the domain name. It's a total service."
While the Hogan Lovells domain name team innovates with a tactical approach to the marketplace, lawyers will need to consider what strategic advice to supply. "Firms should be advising all of their clients how to adapt their domain name strategies to new gTLDs," argues Brian Winterfeldt, a partner at Steptoe & Johnson and member of INTA's expansive internet committee. But lawyers who completed WTR's survey had advised an average of only 24% of their clients on this issue.
Attorneys will need to pick up the pace soon, perhaps channelling a revenue stream from the new rights protection mechanisms. Several mechanisms have been developed over a number of years through the ICANN community, which includes IP owners and their representatives. The most contentious provision is that of the Uniform Rapid Suspension (URS) system, described by ICANN as a "cost-effective, expedited [takedown] process in instances of clear-cut trademark abuse".
Critics have suggested that the URS has become less rapid at every stage of the policy development process. While the ICANN board recently conceded that the respondent's time limit be reduced from 20 to 14 days, mark owners will not yet breathe a sigh of relief. As Erik Wilbers, the head of WIPO's Arbitration and Mediation Centre, told WTR: "You could have two different panels, over two years, looking at one domain name - for what was supposed to be an obvious case of squatting."
Nevertheless, most external counsel expect the URS to bring business. Half said that it was likely (50.4%) that the URS would provide a good business opportunity. A handful (3.5%) even described it as highly likely.
The real test of the URS - and attorneys' tactics - is whether it will offer a better alternative to the UDRP. Shrewd lawyers will be able to offer strategic advice based on the merits of both mechanisms. "Attorneys who are looking after their clients' best interests will weigh the URS against the UDRP," states Jim Bikoff, chairman of the IP and internet practice group at Silverberg Goldman & Bikoff. "Usually speed is the most important factor, but remedy is very important too: the URS does not result in a transfer, so it doesn't compare to the UDRP." But it will be valued by those brand owners who would rather kill infringing domains than have to own and renew them.
This kind of tactical advice, together with strategic advice on second-level registrations and even '.brand' applications, will likely be the market differentiator for a handful of trademark practices over the coming years. "Firms that stay on top of these complex and ever-changing issues will be in the best position to advise their clients regarding the optimal strategies for registration and enforcement in the new internet age," comments Winterfeldt.
More details on exactly how in the full coverage of WTR's survey, which will be published at the end of October in Issue 28 of WTR magazine.
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