Technology &
Internet Law

ICANN Developments - Two More
New gTLDs: .name & .pro

The Internet Corporation for Assigned Names and Numbers (ICANN) has now released the names of the registry operators for the new .name and .pro generic top-level domain names. They are Global Name Registry ('Global') (a British company) and RegistryPro for .name and .pro respectively. .name will be a domain name for individuals and .pro will be for certified professionals, like doctors, lawyers and accountants. These two domains names will now join the other more established . com, .net and .org, and the newer .biz and .info domain names. 

The Problem 

The problem, however, is that it is unclear - given the number of unmet deadlines - when the four new domain names ( .biz, .info, .name and .pro)  will go 'live'. Moreover, there still remains questions as to the progress of the remaining three domains (namely, .aero, .coop and .museum). 

. name 

As already mentioned, the .name domain name is for individuals. 'Personal name' has been defined as a 'person's legal name, nickname or name by which the person is commonly known'. According to Global, it is possible to register the following: 

• the personal name of an individual
• the personal name of a deceased person
• the personal name of a fictional character 

This has caused some concern to the intellectual property (IP) industry because of the possibility of individuals demanding names which are likely to clash with established business names. The position has not been made any better by the failure of Global to outline an effective disputes procedure, even though it has been announced that there will be an Eligibility Requirements Dispute Resolution Policy (ERDP) that will deal with conflicts with trade marks and defensive registration. The Uniform Dispute Resolution Policy (UDRP) can still be used to deal with cybersquatters through the auspices of the World Intellectual Property Organisation (WIPO) and like organisations. 

The .name process will be based on giving exclusivity only to the third level domain name. Whereas the second level domain name would have to be shared by all those with the same name. Thus, if Maitland Kalton wishes to register 'maitland.kalton.name', he can have exclusivity to the name 'Maitland' (i.e. the third level domain name), but must share the name 'Kalton' (i.e. the second level domain name) with all others called 'Kalton'. He cannot, however, have 'kalton.name' (no one can). However, another Maitland Kalton could have 'maitland1.kalton.name'. Moreover, Global will also sell e-mail addresses, after all its parent company is Name Planet. Thus, Maitland Kalton could buy the e-mail address: 'maitland@kaltons.name'.  

It is possible to make a defensive registration. However, this is likely to be very expensive. Furthermore, if a defensive registration is challenged successfully three times, it can be cancelled without reimbursement. It can be challenged successfully if, for example, the registrant can be shown not to have rights in the name which someone else is commonly known by. 

The registration is contemplated to be in two phases. The first phase - which is supposed to begin on 2 October 2001 (fingers crossed on that) - will allow trade mark owners to take out exact matches to their marks in respect of either the second or third level names or a combination of both. The second phase registration, which is due to open a month thereafter, will be open to the public on a first-come-first-served basis. 

.pro 

This domain name should have the smoothest ride because it is restricted to initially to members of the legal, medical and accountancy professions. The registry operator, RegistryPro, has envisaged a 'sunrise period' for trade mark holders and has adopted the UDRP. Moreover, it will provide a WHOIS search mechanism, both unpaid and paid. 

During the 'sunrise period, those who have registered trade marks at least one year before the registry opens, will be given priority, provided the name matches the trade mark exactly. The registration number and jurisdiction of the mark will be screenable on the WHOIS search. 

Policies for thwarting registrars from 'hoarding' and 'front-running' names are in place. Moreover, RegistryPro is planning to develop an independent arbitration system to resolve disputes between the registry and the registrars. 

Best Advice 

Nicholas Wood, President & Founder of Net Searchers, has the following advice to give to would be domain name registrants. He says: 

'The truth is that the best strategy is rooted in basic trademark common sense: identify the marks that you want to use to communicate or that you must protect under each of the new gTLDs; prepare the supporting material that you might need to support an application (such as a certified copy of a trademark or certainly the registration number); research the registration support being offered by a variety of naming companies and compare what they say to what is stated on the websites of the new gTLD operators; note down the timelines that the registry operators are publishing and look out for trigger dates such as the opening of a sunrise period; set a budget that is realistic to meet your needs (don't forget to compare the cost of blocking schemes to the value of registrations; speak with your regular suppliers: what do they advise? Is it affordable? Will it be effective? Then do what you have always done - make your own mind up and watch for infringements.' 

NEED TO KNOW MORE?

For further information on trade mark protection 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.

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