It has been hyped as creating ‘the next great internet goldrush’,1 as being a ‘momentous step forward’,2and opening up a ‘market of millions’.3Nevertheless, you could easily be forgiven for not knowing what the above refer to, and happily forgiven for not really caring. However, you might not be forgiven for sitting back and letting someone create the opportunity to ride rough-shod over your company’s trademarks.
Domain names in general
It has all come about because of the creation by ICANN of seven new ‘top level domains’ (TLD). You will doubtless have come across thousands of Internet addresses. Here’s a typical one:
http:// www. reidminty. co. uk |
The first point to note is that the address is not, in fact, made up of words. Each unique computer linked to the Internet has an IP(Internet Protocol) address – a series of numbers which denote its location. However, since humans find words easier to remember than numbers, it is given a memorable representation in word form.4 When you enter it into your Web browser it connects to a Domain Name Server (essentially a directory of IP addresses) which looks up the numbers to which your requested address corresponds. It then connects to the computer which hosts that address, retrieves the requested data and returns it to your computer, which then displays it as a Web page.
Starting at the end of the address, the top level domain (‘TLD’) is the two- or three-letter code (.com, .uk, .ie) which denotes either purpose or geographical location. When conceived, the domain naming system provided for seven three-letter TLDs, (.com, .org, .gov., .net, .mil, .arpa and .edu) which sub-divided domains by purposes. Subsequent to the designation of those domains, almost every country in the world that wanted its own TLD was granted a ccTLD (country code TLD), the number of which now stands at several hundred, from theAscension Islands (.ac) to Zimbabwe (.zw).5
In many cases, as in the diagram above, the TLD is broken down yet further by a sub-level domain, such as .ac or .co, to specify more precisely the sphere of the domain name.6
Next comes the actual domain name itself, in this case ‘reidminty’. Usually these denote companies or products, but some are more descriptive (such as ‘ihatetonyblair.com’ or ‘amihotornot.com’).
The last piece of the address denotes the server within the reidminty domain on which the information sought is stored. This acts as a third level in the domain, so that news.reidminty.co.uk can act as a different site to www.reidminty.co.uk.
The Protocol defines the way in which your computer communicates with the computer holding the information you are trying to receive. By far the most common is the Hyper-Text Transfer Protocol (http), but amongst others are ‘ftp’ (File Transfer Protocol) and ‘gopher’ (as in ‘Go for this, go for that’).
Since the meteoric growth of the Internet began, people have been crying out for more TLDs, but ones which will indicate not the geographic locale of the Web site, but the sphere in which it operates. Although new.net recently introduced 20 quasi-TLDs, including .mp3, .law, .shop and .xxx, such TLDs are not recognised as official by ICANN, and Web-users will be unable to access them unless they either amend their browsers, or use an ISP which has programmed the new names into its system.
This situation is going to be rectified this coming summer, with the introduction by ICANN of seven new TLD’s: .pro (for accountants, lawyers and doctors), .info (for anyone), .biz (for businesses), .name (for individuals), .museum (for museums), .coop (for co-operatives) and .aero (for the aerospace industry). The rights to operate and sell domains within these TLDs have been granted to seven separate bodies, with a joint venture between a Delaware spin-off from Lockheed Martin and a spin-off of the University of Melbourne (NeuLevel) being granted governance of .biz, and a consortium of domain name registrars (Afilias) being placed in control of .info.
Whilst the creation of the new TLDs is doubtless a worthwhile step, enabling, as it does, greater diversity on the Internet, it opens up yet another can of worms for those seeking to protect and enhance their registered trademarks on the Internet.
Trademark protection and dispute resolution
Stories about so-called ‘cybersquatters’ are numerous –those who buy up domain names which are trademarks (registered or unregistered) or indicative of famous companies or persons. A prime example was One in a Million,7 which purchased, amongst many others, domain names such as ladbrokes.com, marksandspencer.com, waitrose.com and cadburys.com. It then attempted, in some of the cases, to sell those domain names back to the trademark owners for prices varying from £100 to £25,000. What routes are open to the trademark owners in such situations?
ICANN has a Uniform Domain Name Dispute Resolution Policy which has filtered down to, and been adopted by, the registration authorities governing TLDs. The procedure covers domain names which are identical or confusingly similar to trademarks, where the registrant has no rights or legitimate interest in respect of the name, and the name is being used in badfaith. In such situations, the registrant contracts (when purchasing the domain name) to mandatory administrative proceedings, carried out by one of ICANN’s nominated dispute resolution agencies, the result of which is limited to the cancellation or transfer of the domain name registration (if the complaining party’s claim is upheld).
Unfortunately, such proceedings are rendered effectively void in the event that, prior to or within ten days after a decision is reached, the registrant or the complainant issues proceedings in a court of competent jurisdiction. In such a case, ICANN or the relevant registration authority cannot cancel or transfer the domain name until such time as the dispute has been resolved between the parties, or the court has ruled on the rights of the registrant, and ordered a transfer if it finds in favour of the complainant. However, given the speculative nature of many of the purchases made bycybersquatters, it is unlikely that, in the face of an adverse ICANN decision as to any ownership rights, they would have the time, money or inclination to proceed to court to justify their ownership rights. This gives rise to the large number of transfers of ICANN domains – out of 2,932 decisions to date, 2,320 have resulted in the transfer of domain names – with 568 decisions going in favour of the registrant.
Nominet’s own dispute resolution service provides for attempted mediation by Nominet’s staff. If this fails, Nominet takes a decision as to whether or not to suspend or cancel the registration; unless so ordered by the courts it does not have the power to transfer the registration of the domain name.8 If any party is not happy with Nominet’s decision, it can ask for the decision to be referred to Nominet’s external panel, who indicate that they either agree or disagree with the decision, and make a recommendation – Nominet is under no compulsion to go along with that recommendation. Again, in common with ICANN, either of the parties are free to resort to litigation during the dispute resolution procedure. Nominet point out that their mediation services are free, and currently resolve approximately 33% of domain name disputes.
Unfortunately, Nominet (by its own admission) rarely uses the powers of suspension or cancellation which it has granted itself. For this reason, Sainsburys, Marks and Spencer and Ladbrokes were forced, through the actions of a speculative and bad faith purchaser, to pursue a claim through the courts in order to secure the rights to a name which should, in their view, have been protected by their trademark registration in any event, with the associated time and effort implications which that brings.
A whole new can of worms
Now, with the introduction of the new TLDs, the entire situation will re-commence, with companies and speculators scrambling to purchase not only the ‘good’ domain names – generic or descriptive names such as business.biz or sport.info – but also those which would, in the normal course of events, be owned by their respective trademark owners, such as microsoft.bizor amazon.biz.9
It is, therefore, important for trademark owners to act to protect their rights, or rather to avoid having to protect their rights through ICANN or the courts. The introduction of new registration procedures by the TLD operators has, to a certain extent, made this possible, if they act quickly.
.biz Protection
Under the regulations imposed by NeuLevel, trademark holders have until 9 July 2001 to file a claim with them for a particular domain. After that date, it will open up the remaining domains to anyone who wants one. If more than one person or company attempts to register the same domain, the‘winner’ will be chosen at random by NeuLevel.
If a company is awarded a .biz domain name, they will be informed if a trademark holder has filed a claim for that domain. The domain will then be frozen for a period of 30 days, to enable the disputing parties to resolve the matter between themselves. In the event that the parties are unable to resolve their dispute, NeuLevel has adopted the ICANN policy, and will farm out disputes to one of the recognised members of the administrative panel.
Pre-registrations for .biz domains had reached a level of over one million at the end of May 2001, and this number is expected to substantially increase by the time of launch. Estimates indicate that approximately 5 million.biz domains will be registered in the first five minutes of the system ‘going live’. From 9 July to 30 September 2001 those who have pre-registered will be told if their applications have been successful. After 1 October 2001 the remaining domains will be opened up to all-comers, and the trademark claim service will no longer operate.
.info Protection
Afilias is taking a slight different line to assist trademark owners in protecting their rights. It has created a ‘sunrise period’, a 30-day period expected to begin in late June, during which owners of registered trademarks issued before 2 October 2000 can apply on an exclusive basis for ownership of the domain trademark.info, where trademark is identical to the trademark for which protection has been granted. It appears as though there is no such protection for owners of unregistered trademarks. After the end of the 30-day sunrise period registration will proceed for 15 days on a basis which randomly decides between competing applicants, and thereafter on a first-come, first-served basis.
In the event that any disputes arise during the sunrise period, Afilias has enlisted the help of WIPO, who will attempt to resolve disputes between vying parties either on an abitration basis (by which the parties agreeto be bound by WIPO’s decision) or a mediation basis (through which WIPO will make recommendations which are not binding on the parties).
Whilst the organisations controlling the other five new TLDs have not yet revealed in detail their plans to control registration of trademark protected names, it is a safe bet to assume that they will, in the main, resemble the approaches taken by NeuLevel and Afilias.
Conclusion
The message is relatively simple. If you are the owner of a trademark, you will have spent money and time in securing its registration. It would be remiss of any trademark owner or authorised licensee to sit back and let the protection which it potentially affords them be affected by not being able to control the content of a site at trademark.bizor trademark.info, or one of the other new TLDs.
Sure, registering your trademark with NeuLevel will not guarantee that a cyber-squatter will not attempt to register trademark.biz, nor that NeuLevel will step in to stop anyone attempting to do so. It will, however, ensure that the potential squatter is warned prior to proceeding with his pre-registration that you believe you have a protected interest in the domain name. In the event that you are forced to issue proceedings for the recovery of your name, the existence of that prior warning can only help your cause, showing that the squatter casually disregarded the rights which you claimed to have, and failed to take advantage of the dispute resolution service available to resolve any conflict which could have arisen if he thought that he had similar or greater rights than yourself.
For trademark.info,the procedure is much simpler. As long as you can prove that you have owned the trademark for the requisite period of time, there should be nothing stopping you applying during the sunrise period for registration of trademark.info– the cost will, at most, be £50, and probably a bit less. If any doubts remain, consider the costs which would doubtless be involved in taking a contested court action to recover your domain name from a squatter. It’s a safe bet to assume that they’ll be substantially more than £50.
In a word, then, register. If you don’t, the chances are that somebody else will.
© Reid Minty 2001
Jonathan Ebsworth is apartner, and Giles Bennett a trainee solicitor, in the Technology Group of ReidMinty Solicitors in Mayfair, and would like to acknowledge the assistance givenby John Fleming.
Endnotes
1. Wired.comnews, 22 May 2001.
2. Vint Cert– Chairman of the Board of ICANN and father of the Internet – 15 May 2001.
3. Afilias.com,5 June 2001.
4. As a short demonstration, you may find it difficult to remember 207.171.168.18. However, when told that it is, in fact, www.amazon.co.uk, you’ll probably be able to remember that without too much trouble.
5. Interestingly enough, some countries have profited very nicely from their allocated TLDs – the islands of Tuvalu (Pop. 10,000) found that theirs (.tv) was rather soughtafter, and promptly sold the rights to govern and assign .tv domain names for £35million. By a further stroke of coincidence, the island of Niue was pleased to discover that their top level domain (.nu) was, coincidentally, the French word for nude. No prizes for guessing what you’ll find on .nu Web sites, then.
6. There are eleven sub-domains used in the UK – .ac.uk, .co.uk, .gov.uk, .ltd.uk, .police.uk,.nhs.uk, .sch.uk, .plc.uk, .net.uk, .mod.uk, and .org.uk.
7. Marksand Spencer PLC v One in a Million [1998] 4 All ER 476.
8. This situation is to be rectified in September 2001, with the introduction of new Nominet rules – these will grant the power of transfer (where the registranthas signed up under the new terms and conditions), provide for a two stage test(complainant must show rights in the name and abusive use), introduce a non-exhaustive list of possible defences, and introduce a two stage appeals procedure – perhaps the most important review would mean that the two stage test will avoid the down-sides of ICANN’s ‘prove a negative’ requirement.
9. It is interesting to note that on afternic.com (a domain name auction service), bidding is already reaching £10,200 for www.show.biz, even though no-one yet owns it, nor can guarantee that they will own it.
