Background - Practices (Details)

TLDs and Domain Names

Advances in technology and the growth of the internet continue to present our clients with many legal challenges. For the last 20 years, we have been at the forefront of legal developments associated with the growth of the Internet. We have helped our clients to stay ahead of the competition as the Internet domain name system has undergone profound change. Our focus is on anticipating and understanding the latest developments in the regulation of the internet and the relevance these have for our clients and the industries in which they operate.

With a new application round for TLDs expected in 2019 or 2020, we are in a perfect position to continue helping our clients navigate these complex waters.

Litigation Proficiency & Sound Advice

We have assisted numerous clients in developing their new generic Top-Level Domains (gTLDs) strategy and in preparing their applications for new gTLDs.

We help clients identify significant concerns and develop strategic options to address those concerns. We have advised applicants, wishing to ensure that their application be approved and their TLD launched, and non-applicants, concerned that a particular new TLD might adversely impact their rights or business.

Crowell & Moring has a unique experience that puts us in the perfect position to defend the interests of aggrieved parties in the gTLD and domain name sphere. Our firm has been successful in challenging decisions of ICANN (the Internet Corporation for Assigned Names and Numbers), and we have extensive experience in handling objection procedures related to domain applications as well as domain name disputes, both in courts and through alternative dispute resolution. In fact, we have been involved in about 70% of the disputes arising from ICANN’s various decisions regarding gTLD applications, one case being that of booking.com, whom we represented in arbitration challenging the decision of ICANN to put their application for .hotels into a contention set with .hoteis.

Our Team

Our multidisciplinary team, with its abilities in intellectual property, information technology, and competition law, has built up a particularly impressive knowledge of the Internet domain name system, helping clients to apply for gTLDs (such as .hotels, .webs, .booking, etc.) and to challenge, where necessary, the decisions of ICANN.

“Highly regarded team with a standout reputation in domain name, patent, trademark and design litigation.” Chambers Europe, 2017

“Flip Petillion is well regarded in the internet space. He is particularly experienced in mandates related to domain names […]. Clients describe him as a ‘very good lawyer who responds quickly and has a nice way of working.’” Chambers Europe, 2016

Regulatory Framework

Our team closely monitors the international framework of the domain name system (DNS), focusing on the recent expansion of the DNS and the introduction of so-called IDNs (domains and domain names in non-Latin script). We have vast experience with different dispute resolution mechanisms before a number of ADR centers in different jurisdictions, each using its own specific set of rules.

Our team recently authored a book on the current and future ICANN framework and decision process.

“[E]ssential reading for anyone who operates in the ICANN and domain name systems. It is so thorough, and its recommendations so thoughtful, that it is sure to have an outsized impact. … This book provides a clear roadmap for how those processes can be improved in the next round of new gTLD applications.”

Competition Law

Crowell & Moring helps clients to obtain and maintain exclusive control over their TLDs. We regularly advise on changes and developments in various jurisdictions where competitors and competition authorities are increasingly active in this field.

Representative Matters

Domains

  • Assisted Fortune 100, CAC 40 and other multinational companies in developing their new gTLD strategy and in preparing their applications for new gTLDs.
  • Prepared almost one hundred applications for brand, generic and community applications for new gTLDs.
  • Monitored the new gTLD applications and ICANN developments.
  • Represented a global internet company in challenging ICANN decisions.
  • Represented applicants in Legal Rights Objections before World Intellectual Property Organization in Geneva.
  • Represented applicants in Community Objections before the International Chamber of Commerce (ICC) in Paris.
  • Advised applicants on Limited Public Interest Objections before the ICC in Paris.
  • Represented applicants in String Confusion Objections before the International Center for Dispute Resolution (ICDR) in New York.
  • Represented major European cities in gTLD related litigation in Europe and in the U.S.
  • Drafted and negotiated service level agreements with back-end registry operators and registrars.
  • Advised governmental authorities with requests for proposals and concession agreements.
  • Advised on the registry agreement with ICANN and related agreements

Domain Names

  • Screened ICANN’s rights protection mechanisms regime (including the Trademark Clearinghouse and Uniform Rapid Suspension).
  • Advised on internal and external domain name registration and related policies.
  • Drafted domain name registration policies, launch policies and dispute resolution policies.
  • Represented Fortune 100 trademark holders in domain name litigations before local courts, U.S. courts and in ADR proceedings before World Intellectual Property Organization, National Arbitration Forum, Czech Arbitration Court, CEPANI.