Technology &
Internet Law

Internet Corporation for Assigned Names and Numbers - ICANN - Release gTLDs

The initial mad scramble for "sexy" domain names has waned as the names have become booked up, often by people wanting to make a "fast buck".  As a result, the last 6 months has seen a rapid rise in domain name disputes.  In a measure designed to reduce competition for names, ICANN (the Internet Corporation for Assigned Names and Numbers) has finally met to decide on the next set of "top level domains" - ie like ".com".  They are: 

.aero                 -           aviation

.biz                   -           businesses

.coop                -           cooperatives

.info                  -           general information

.museum           -           museums

.name               -           individuals

.pro                   -           professionals 

I am sure that many will agree that most of these are fairly unattractive sounding domains with the possible exception of ".biz".  Nevertheless, by being more specific, hopefully they will reduce the scramble for names.  On the other hand, one has to recognise that for the large corporates, hell bent on making sure that they get every possible version of their name with every domain suffix, this will no doubt be bad news: for those who feel they need to register under everything that is available, this is merely a proliferation of domain names.  Whatever happens there is bound to be a rather vulgar rush for names when they are released (the current target date is the end of June 2001).  In fact it is likely that certain names would be more popular than others - as I have mentioned, ".biz" but also probably ".name", ".pro" and the rather dull ".info".  Only time will tell however. 

Where does this leave the average components business?  The first recommendation must be to grab the ".biz".  Whether you would think it worth doing for the ".info" depends on the nature of the business but in most cases I would imagine not.  The rest are unlikely to either apply or appeal. 

For those of you who missed your name the first time around, this may be the opportunity you have been waiting for.  Perhaps you can now avoid the need to spend large sums negotiating over the purchase of a name elsewhere or having to suffer with an inappropriate domain name.  

Where will you stand if you are not at the front of the queue for the name?  Are you going to be protected and is there anything you can do about it? 

First, subject to any specific protections (see below), the names will be allocated on a "first come first served" basis, as always.  At this stage ICANN are advising that you should be wary of companies offering pre-booking services.  Even if they are legitimate/reliable, there is no guarantee they will get in first and you will be paying them a large premium for doing so.  On the other hand, you are otherwise dependent on noticing or being told when the names are finally released.  ICANN say they will be introducing measures to protect existing interests but quite what they mean by that is unclear. 

The theory is that this is yet another opportunity for extortionists to register the name and charge you a premium for it ("cybersquatters").  Since the One in a Million case, it has been well established that mere registration of a name to extort money from companies is considered "bad faith" and will normally lead to the name being transferred to the correct company.  However, in the absence of trademarks it is never as simple as all that.  If the domain name is a generic name (eg ecommercesolicitors.com or computer.com), you will not be able to register a trademark.  You will then only be able to rely on the law of "passing-off" to protect you.  This involves proving that the person who otherwise registers a generic name you are using actually is trying to pass itself off as your company (normally the mere use of the name is not enough). 

Also, if the generic name is not directly indicative of the business type, it is quite conceivable they are in an entirely different line of business and the chances then of a successful claim for passing off are almost nil. 

As to what importance to attach to all of this, much will depend on whether there is such a take up of these names that they become first or second guesses for someone searching on the net.  By this I mean that when you know the name of a company, very often people will simply type in the name and then guess at the ".co.uk" or ".com", hence why it is desirable normally to have both.  Whether that is likely to happen and therefore lose you significant traffic (enough to warrant buying the name) will depend on whether there is much public take up of the names.  One can reasonably confidently predict that the ".biz" suffix will become like that, in which case there will be a serious issue to address.  Otherwise you risk losing a large amount of traffic to another site, whether it is to a competitor's site or not. 

For many this will be yet another unwelcome development in relation to expenditure on internet-related matters.  For others it should be seen as an opportunity to be grasped quickly.  Let battle commence!

NEED TO KNOW MORE?

For further information on ICANN and domain names, contact Maitland Kalton.  Should you prefer to telephone, call us on +44 (0)207 278 1817.

Kaltons Solicitors, Suite 302, Spitfire Studios, 63-71 Collier Street, London, N1 9BE. Telephone +44 (0)20 7278 1817; Fax: +44 (0)207 278 1835.

© Kaltons Solicitors December 2000.  All rights reserved.