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Trademark Protection and New gTLDs

  • To: "tmch-strawman@xxxxxxxxx" <tmch-strawman@xxxxxxxxx>
  • Subject: Trademark Protection and New gTLDs
  • From: "Bradley, Elisabeth" <Elisabeth.Bradley@xxxxxxx>
  • Date: Fri, 21 Dec 2012 20:42:28 -0500

Dear INTA:

Regarding the attached email, I support the enhanced trademark protections and 
agree they are necessary to protect Internet users and third-party intellectual 
property rights.


Elisabeth Stewart Bradley | Assistant General Counsel & Chief Trademark Counsel 
| Bristol-Myers Squibb | NJ: 609-252-4457 | NYC: 212-546-3064 | Cell: 
609-903-2325 | elisabeth.bradley@xxxxxxx

This message (including any attachments) may contain confidential, proprietary, 
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--- Begin Message ---
  • To: Claudio Di Gangi <cdigangi@xxxxxxxx>
  • Subject: INTA Call to Action: Enhancing Trademark Protections in New gTLDs
  • From: Claudio Di Gangi <cdigangi@xxxxxxxx>
  • Date: Fri, 21 Dec 2012 18:14:56 -0500
Subject:  INTA Call to Action:  Trademark Protection and New gTLDs

Dear INTA Member,

INTA urges you to respond by Tuesday, January 15, 2013, to a request for 
 from the Internet Corporation for Assigned Names and Numbers (ICANN) regarding 
proposals to enhance trademark protection under ICANN’s planned exponential 
expansion of the Internet’s Domain Name System (DNS) in 2013.

What’s The Issue?: With nearly 2,000 applications for new generic Top-Level 
Domains (gTLDs) being considered for approval, trademark owners face enormous 
costs and resource burdens to protect their trademarks from misappropriation, 
infringement, and other online threats.

The impact of new gTLDs will vary depending on the nature of the Top-Level 
Domain, its operating rules, and ICANN’s ability to enforce the 
associated-Registry and Registrar contracts.  Some of the applied-for new 
gTLDs, such as .COMMUNITY or .BRAND, may not impose negative social costs and 
as a result, may potentially improve societal welfare in certain respects.

However, with many hundreds of new gTLDs not intending to impose any 
eligibility restrictions -- allowing anyone to register domain names on a 
“first come, first serve” basis – the potential for harm, including consumer 
confusion, is extremely high.

Therefore, for many of the applied-for new gTLDs: the overall net impact to 
society may be negative – and further protections are necessary to protect 
Internet users and intellectual property owners from harm.

In order to enforce your trademark rights and protect consumers from confusion 
in the Internet marketplace, you will likely need to register more domain names 
corresponding to your trademarks, increase monitoring for infringement, and 
bring costly enforcement actions. Given ICANN’s determination to move forward, 
the available domain space on the Internet could easily increase from the 
current 22 gTLDs to over a 1000 new gTLDs.

So What Is The Request For Comments About?  After major concerns were voiced by 
INTA and others, ICANN, under the direction of its new CEO, agreed to consider 
two independent proposals for enhancing trademark protection during the launch 
of the new gTLDs:

·         a proposal that focuses on improving several aspects of the existing 
“Trademark Claims” service, which is called the “Strawman Solution”; and

·         a proposal  to provide a streamlined form of domain name registration 
designed to reduce costs and help trademark owners protect both their 
trademarks and their consumers across hundreds of new Internet registries, 
which is called “Limited Preventative Registrations”.

What is INTA’s Position?  INTA supports the adoption of BOTH the “Strawman 
Solution” & the Limited Preventative Registration proposals as necessary 
implementation measures for protecting Internet users and third-party 
intellectual property rights. INTA believes these enhancements should be 
implemented so ICANN’s underlying new gTLD policy of Protecting the Rights of 
Others can be achieved - given the breadth, scale and scope of the proposed 
expansion of the Domain Name System.

However, while both proposals provide some incremental improvements to what is 
currently being planned, the Limited Preventative Registrations (LPR) proposal 
offers significantly more protection. The LPR mechanism enhances consumer 
protection by providing a cost-efficient and streamlined method to register 
names across hundreds of new registries as opposed to the current mechanism 
contained in the new gTLD program - which in light of the volume & nature of 
applied-for new gTLDs - is cumbersome, inefficient, resource-intensive and 

So What Can You Do?  Please indicate your support for the enhanced trademark 
protections  -- both the proposal for Limited Preventative Registrations (LPRs) 
and the “Strawman Solution” proposal -- by sending an email to: 
tmch-strawman@xxxxxxxxx<mailto:tmch-strawman@xxxxxxxxx> by no later than 
Tuesday, January 15, 2013. (Note: you must reply to a confirmation message 
after e-mailing your comment.)

What If You Have Questions? If the information provided by ICANN is not 
sufficient for your organization to decide on whether to submit comments, 
Claudio DiGangi, INTA’s External Relations Manager, Internet and the Judiciary, 
is available to answer your questions and provide more information.  He can be 
reached directly at cdigangi@xxxxxxxx<mailto:cdigangi@xxxxxxxx> or (212) 

Trademark owners are counting on you.  Please let ICANN know your position on 
these enhanced rights protection mechanisms.

Relevant Background References:

1.List of applied-for New gTLDs: List of Applied-For New 

2.ICANN Phase I Economic Report on New gTLDs: ICANN's Economic Framework Report 
on new 

3.INTA Webpage on New gTLDs: INTA Webpage on New 

--- End Message ---

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