The
Divine Right of Names:
New TLDs Prep for Start-up
by
Ellen Rony
- Will
the highways of the Internet become more
few?
- --George
W. Bush, Concord N.H. (January 29,
2000)
The
pressure for expanding the Internet name space is palpable.
At the current rate of growth, .COM domain names should top
20 million by the time ICANN meets in Marina del Rey to
discuss the introduction of new top level domains (TLDs).
Market
theory suggests that with more TLDs, registrants will have
greater opportunity to acquire the names they want. As the
supply of TLDs increases, the resale prices for desirable
names will collapse, removing the profit incentive that
drives domain speculation.
Trademark
owners have not embraced this solution. They fear that the
introduction of new TLDs will increase opportunities for
infringement, cybersquatting and freebooting to such an
extent that it will be impossible for them to effectively
police the Internet for such violations. Nonetheless,
bottleneck basics have exposed the obvious: surging demand
for acceptable names, diminishing supply, robust speculation
and a zero sum game. Now, for the first time since the
domain name system was established
in 1984,
new TLDs--other than country codes (ccTLDs)--will be added
to the legacy root.
Proof
of Concept
On
August 3, 2000, ICANN issued a formal call
for proposals
by those seeking to sponsor or operate one or more of the
new TLDs, which will be introduced in a "measured and
responsible manner". Applicants must include a
non-refundable $50,000 fee, technical, financial, and
business capabilities; registry details; data privacy and
escrow policies; acquisition plans; capital requirements and
fitness disclosures. ICANN has also been attentive to the
friction over rights to domain names, and trademark
interests will play a key role here. Although specific
trademark policy has not been imposed upon the new TLDs, an
applicant seeking to win board approval must describe
measures for protecting intellectual property and other
rights, along with policies that discourage abusive domain
name registration practices.
ICANN's
TLD process overview identifies four general types of TLD:
sponsored or unsponsored; restricted or not. In a sponsored
TLD, the sponsoring organization selects the registry
operator. A sponsoring organization will have authority to
make decisions regarding policies applicable to the TLD,
provided they are within the scope of the TLD's charter and
comport with broader requirements concerning
interoperability, availability of registration data, etc. to
serve the interests of the Internet community.
For
unsponsored TLDs, ICANN will formulate the policies, which
initially will be those currently applied to .COM, .NET and
.ORG. Restricted TLDs have limitations regarding who may
apply for registration and/or what uses may be made of those
domain names. An unrestricted TLD is open to all, regardless
of residency or intended use.
ICANN's
formal TLD application process concluded on October 2, 2000.
Among the 44 proposals currently under review (47 were
submitted, but three were incomplete or withdrawn) 15 are
for unsponsored/unrestricted TLDs, 8 are
unsponsored/restricted, and the remaining 21 are
sponsored/restricted proposals.
Sunrise
Controversy
A
key concern for ICANN is the gold rush mentality that will
greet the launch of the new TLDs. An initial explosion in
registrations poses concerns about bottlenecks, preferential
treatment of applications, and cybersquatting. The Council
of Registrars (CORE), notes in its TLD application for .NOM,
"The initial rush effect is proportional to the overall
speculative interest aroused by the TLD."
ICANN
requires applicants to address how registrations will be
handled at start-up. The application
asks:
E15.
Will you offer any "sunrise period" in which certain
potential registrants are offered the opportunity to
register before registration is open to the general
public? If so, to whom will this opportunity be
offered (those with famous marks, registered
trademarks, second-level domains in other TLDs,
pre-registrations of some sort, etc.)? How will you
implement this?
The
concept of a sunrise period ripened after a World
Intellectual Property Organization (WIPO) study on the
management of Internet names and addresses. In its
Final
Report,
WIPO recommended that a mechanism be established for
granting exclusions to famous and well-known marks. True
consensus on the appropriate mechanism, however, has not
been achieved within the Internet community.
ICANN's
Domain
Name Support Organization
(DNSO) created Working Group B in July 1999 to address the
implementation of protection for famous and well known marks
in the domain name system, as recommended in the WIPO
Report. The group discussed a proposal for creating a list
of famous trademarks to be used to protect the registration
of the marks as domain names. During a proposed "sunrise"
period, famous trademark owners would be able to register
their marks as domain names without competition from the
general public.
This
hotly-debated proposal was rejected by a number of Working
Group B members. Among the objections, they noted that the
creation of a list of famous marks would expand the existing
rights of famous trademark holders; eliminate individuals,
non-commercial groups and small businesses to register
domain names for non-commercial uses; and require an
exhaustive list of criteria to define.
In
light of the difficulty and controversy surrounding the
creation of a famous marks list, the Intellectual Property
Constituency (IPC) submitted--on deadline--a proposal for
how all trademarks and could be protected when new TLDs are
introduced. Dubbed Sunrise+20,
the proposal provided that any owner of a valid national
trademark or service mark registration would be eligible to
register as domain names that mark plus up to twenty
variations before the TLD opens to the general public.
Registrations by trademark owners would be handled during a
30-day sunrise period on a first come, first-served basis.
Sunrise+20
drew vocal opposition from those who asserted that an
exclusion for all trademarks exceeds both the scope of the
working group and ICANN's charter as the technical
coordinator of Internet administration. The IPC published a
revision several months later, christened the
Daybreak
Proposal.
The "daybreak period" would be available only to owners of
trademarks and service marks to pre-register those marks as
domain names. Thus, during "daybreak", a trademark
owner would be confined to a single registration
corresponding to the exact mark. Notwithstanding the IPC's
concession to a more limited approach, neither Daybreak nor
Sunrise +20 are grounded in U.S. or international law.
The
Non-commercial
Constituency
of the DNSO and the United
States Small Business
Administration
lodged complaints, among them that the Daybreak provision
will not be effective in curbing trademark violations since
only the exact corresponding domain name can registered
preferentially; trademark interests are already adequately
protected by the Uniform
Dispute Resolution Policy
and the Trademark
Cyberpiracy Prevention Act
and the proposal would deny the public-at-large an
opportunity to register domain names on a first-come
first-served basis.
Intellectual
Property Provisions
Fast
forward to November 2000. A quick review of the
TLD
applications
argues that the process is a win for proponents of
preferential registration for trademark owners.
ICANN
requires every TLD applicant to propose a "well-thought-out
plan for allocation of names during the start-up phase of
the TLD in a way that protects the legitimate interests of
significant stakeholders, including existing domain-name
holders, businesses with legally protected names, and others
with which conflict is likely. " And the applicants have
complied.
Forty-five
percent of the TLD proposals include specific sunrise
provisions that allow owners of trademarks or famous marks
to acquire their respective marks as domain names in advance
of the general public.
The
Sunrise period varies from 15 days (.Abacus America, BIZ,
.COOL, .FAM, INC, .XXX) to six months (Internet Events
International, Inc., .EVENT). Several TLD applicants
designate this time solely for owners of famous marks,
globally recognized marks (DotKids, Inc.) or "major marks
"(Affinity Internet, Inc.). One proposal (Commercial
Connect, Llc for .MALL, .SHOP or .SVC) includes copyright
holders along with trademark owners in its 90-day sunrise
provision.
The
various TLD applications detail other mechanisms to protect
intellectual property rights and discourage the registration
of domain names in bad faith. For example, both NeuStar,
Inc. (.DOT, .INFO, .SITE, .SPOT, .SURF, or. WEB) and the
International Air Transport Association (.TRAVEL) describe
an intellectual property notification service.
The
IP notification offers no guarantee that the name will be
reserved for or allocated to the trademark owner as there
may be additional parties claiming intellectual property
rights to the same domain name.
Additionally,
the International Air Transport Association plans to publish
all new applications for domain names on the Internet for a
period of ten days so that parties with rights in any of the
names can file litigation before the registration being
granted, before any use of the domain name occurs.
Eastern
Communications Company (.FIRM, .GAME, .INC, .INFO, .LTD,
.NEWS, .SHOP, .STORE, .or TOUR) has no sunrise policy but
will prescreen registrations for famous and well-known
marks.
Sarnoff,
et, al. ( .I ) proposes both a Daybreak pre-emption for
trademark owners and a "takedown" provision to discourage a
bad faith registrant from subsequently registering minor
variations of the same domain name. Subsequent similar
domain name registrations to that party will be deleted or
transferred upon notice of such prior decision by the
complaining party in the prior dispute.
Image
Online Design (.WEB) plans to establish a "blackout" period
for registrants in its unrestricted TLD. The application
specifically rejects the sunrise concept but offers a 14-day
phase-in period during which trademark holders can place
existing .WEB registrations (i.e., those that have been
pre-registered) on hold pending the resolution of a dispute
under either the UDRP or a court of competent jurisdiction.
The
Cooperative League of the USA, sponsoring a proposal for the
restricted TLD .COOP or CO-OP, offers sunrise only for
members of the National Cooperative Business Association and
the International Co-operative Alliance during a six-month
start-up phase.
SRI
International, sponsor of .GEO, an infrastructure for
registering geospacial references, offers no sunrise period
but will conduct a trademark-type search prior to
accreditation (registration), followed by a sixty-day period
for public comment.
The
Museum Domain Management Association (.MUS, .MUSE, .MUSEA,
.MUSEUM, MUSEUMS) also has no sunrise for its restricted TLD
proposal but introduces a "cooling off" period of five days
post-registration to minimize the workload on registrars
caused by registrants who their minds.
Sidelines
Until Sunset
Where
does that leave the rest of us? Those who have common law
marks, non-commercial uses for the same words, new
entrepreneurial plans tied to commonplace words, surnames
that are identical to trademarks, or other legitimate uses
for the same words must remain on the sidelines until after
trademark owners scoop up their premium choices.
Plans
that do not circumvent a first-come, first-served policy and
lack preferential treatment for one class of Internet users,
would be a fairer approach. Trademark owners already have
legal tools--the TCPA and the UDRP--as deterrents to bad
faith registrations. Several private companies currently
offer monitoring services, which track domain name
registrations and notify parties when a specified character
string is registered. Between the ACPA, UDRP and these
monitoring services, trademark holders have effective
mechanisms to prevent cybersquatting and enforce their
trademark rights. Logistical or technical solutions can be
developed to handle the onslaught of initial registrations.
The
Office of Advocacy of the Small Business Administration
noted last
April
that the sunrise approach "creates a presumption that
commercial use is the superior use of the Internet." While
commercial use of the Internet is valuable to the economy,
it does not justify giving that class of users superior
rights to individuals and non-commercial
interests.
This
clash over rights to names may reflect a maturing global
technology. But I remain wistful for a simpler time on the
Internet, only a few years ago, when the common concern was
how long it was taking to replace those ubiquitous "under
construction" signs.
In
my humble opinion.
Copyright
© 2000 Ellen
Rony.
All rights reserved.
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