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ONLINE SECURITY The new world


In June 2012, the International Committee for Assigned Names and Numbers (ICANN) announced that it had received 1,930 applications for new generic top-level domain name (gTLD) suffixes. In the next decade our online experience will be shaped by the likes of .shop, .music and .london. In announcing the applications, ICANN’s chief executive officer Rod Beckstrom commented that this would change the Internet forever. You cannot argue with his statement, but will it change for the better or worse?


For an online brand it is no longer just a question of registering your domain names in key geographical regions, or monitoring potential brand infringements. A simple nike.com presence may now have to look at nike.london, nike. boots and nike.soccer. For a brand owner this is a logistical minefield and a potentially very expensive one too.


Brand owners will need to ensure that they consider their infringement policies. What will they allow others to register, and what will they pursue for defensive reasons? Sedo, one of the world’s largest domain name brokers, has conducted a study of what it believes will be the


most effective new domain name suffixes. It feels that .shop, .web and .site will be the most popular and thus the ones where brand owners will have to be the most diligent.


Te new gTLD world is still at least a year away, and a lot can change in that time. NetNames has worked closely with ICANN as one of the leading global registrars and will continue to advise its clients on what steps they can take to ensure that their brands are protected, both at the evaluation stage of the new gTLDs through potential formal objections and, once launched, through trademark protection services.


Te growing threats of entering global commerce and reaching out to new customers and markets must be part of a company’s strategy. Just as opportunities open up, so will new threats. Te protection of vital online digital assets needs to be the cornerstone of any expansion strategy—a company has to stay one step ahead in the 21st century. 


Stuart Fuller is director of communications at NetNames Ltd’s parent company, Group NBT Ltd. He can be contacted at: stuart.fuller@netnames.com


Stuart Fuller has significant experience in brand protection, both in retail and corporate and resale markets. He specialises in creating high performing teams, adding value through corporate development programmes and is a qualified sales coach, mentor and expert in performance and change management. Fuller was previously responsible for Group NBT’s Nordic region and online division.


GLOBAL REACH FOR GLOBAL TRADEMARKS


The intellectual property practice at Duane Morris is recognized as one of the leading IP groups in the United States. National publications such as U.S. News and World Report, Intellectual Property Today and IP Law360 have all ranked Duane Morris among the leading law firms handling patents, trademarks, copyrights and related IP litigation.


Clients turn to our IP attorneys to assist in obtaining trademarks and copyrights, performing searches, rendering registrability opinions, drafting and negotiating complex licenses and litigating trademark and copyright disputes. We also coordinate with our international networks of law firms to file and maintain thousands of trademark applications and registrations around the globe.


Duane Morris – Firm and Affiliate Offices | New York | London | Singapore | Los Angeles | Chicago | Houston | Hanoi | Philadelphia San Diego | San Francisco | Baltimore | Boston | Washington, D.C. | Las Vegas | Atlanta | Miami | Pittsburgh | Newark | Boca Raton Wilmington | Cherry Hill | Lake Tahoe | Ho Chi Minh City | Duane Morris LLP – A Delaware limited liability partnership


For more information, please contact:


GREGORY P. GULIA, Partner 1540 Broadway


New York, NY 10036 212.692.1027


gpgulia@duanemorris.com


MARK A. STEINER, Partner One Market Plaza, Spear Tower San Francisco, CA 94105 415.957.3036


masteiner@duanemorris.com www.duanemorris.com www.worldipreview.com Trademarks Brands and the Internet Volume 1, Issue 3 29


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