New gTLDs and Trademarks - Lawyer Says You Better Have the Dot Com

Attorney* with FairWinds Partners advises (see below) business owners registering a domain name to also obtain the domain name in the "popular .COM TLD in order to prevent other companies from registering same."

Which of course begs the question, if you still need to have the dot Com domain name even when registering a name in another domain extension, then why did ICANN even bother to flood the market with more than 1000 new gTLD extensions? Oh yeah, it's all about the money.

Pay No Attention To That Trademark Behind The Curtain | Domain Name Strategy: "... This case also speaks to the need for business owners to pay attention to the top-level domain when registering domain names.  While the Respondent was wise to register its branded domain name in the gTLD of “.MOBI”, since that reflects its mobile-related services, the Respondent should also have obtained the domain name in the popular .COM TLD in order to prevent other companies from registering the name.  While it is not necessary to register a domain name across all TLDs all of the time, it is important to make a strategic decision about which ones to register defensively in and, as new gTLDs launch, when to use the Trademark Clearinghouse."

*Steve Levy - FairWinds Partners: "Steve, an attorney with over 23 years of experience practicing law... "



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