Fish & Richardson has developed a substantial practice policing and enforcing trademark rights on the Internet. As the online world continues to evolve as a prominent business tool, protecting one's brands on the Web becomes more important than ever. Fish & Richardson's Trademark group has successfully helped clients with global domain name strategy and enforcement and has remained at the forefront of new developments in domain name policy and dispute resolution, including the latest changes in generic top-level domains (gTLDs).
For most clients, we are able to negotiate acquisitions of domain names directly, but there are many reasons why our clients may prefer to remain anonymous when negotiating such purchases. In those situations, we have been successful in engaging outside vendors to facilitate the acquisitions and protect our clients' identities. Fish attorneys regularly run audits on domain names that are available and recommended for purchase. We conduct an analysis on all types of domains, including country code top-level domains (ccTLDs), and work on the appropriate enforcement strategy to recover domains already purchased and/or in use by third parties.
We have enjoyed a remarkable success rate in handling cybersquatting disputes decided under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and we have won more than 110 UDRP cases overall (99% win rate over the last 5 years). In addition to formal UDRP proceedings, Fish attorneys are highly experienced in domain name disputes that quickly settle through the use of cease and desist letters and domain name assignment agreements. We have also developed VIP relationships with certain registrars, and often enjoy immediate resolution from Take Down Notices to Facebook, Twitter, and other sites. If necessary, we have also represented clients in litigation in Federal Court related to keyword advertising, sponsored links, and the Anticybersquatting Consumer Protection Act (ACPA).
New gTLDS
The Internet domain name system faces dramatic changes in the months ahead with the introduction of new gTLDs by The Internet Corporation for Assigned Names and Numbers (ICANN). While .com has long reigned supreme, hundreds of new gTLDs such as .web, .app, and .pharmacy may soon become available.
Fish's Trademark group is advising clients on the new gTLD program and following recent developments and deadlines related to this new domain name space.
Information on the new gTLD applications, broken down in various ways, can be found at:
http://www.brandshield.com/en/NewgTLDApplicationReport.aspx#fullTopic7
http://www.newgtldsite.com/new-gtld-list/
https://gtldresult.icann.org/application-result/applicationstatus
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Recent News and Developments
February 26, 2013
'Trademark Clearinghouse' for New gTLDs to Open March 26
August 15, 2012
gTLD Comment Period Extended
June 13, 2012
New gTLD "Reveal Day" Has Arrived
June 4, 2012
New gTLD "Reveal Day" is June 13 - Are You Ready?
May 16, 2012
ICANN Announces Extension of New gTLD Filing Date to May 30, 2012
March 29, 2012
Internationalized Domain Names (IDN) Available to .FR Owners on May 3
January 31, 2012
Mark Your Calendars – 2012 gTLD Deadlines
December 14, 2011
Trademark Thoughts - Is Your Company Ready for .Anything?
December 5, 2011
Registration of .fr Open to EU December 6
November 29, 2011
New gTLD Applications Accepted Early 2012
October 21, 2011
.XXX Opt-Out Deadline Fast Approaching!
September 7, 2011
Reminder: Limited Opt-Out Period for .XXX Domain Names
July 21, 2011
Preventing Issuance of .xxx Domain Names That Match Your Trademark
July 12, 2011
Fish & Richardson Webinar: Cosmic Shift Coming Soon to Internet Domain Name System