At the INTA Annual Meeting 2008, ICANN announced plans to liberalise top-level domain names by launching a rash of new gTLDs. But why are they necessary, how will they be awarded, and won’t this make the difficult job of managing brands online even harder for IP Rights owners? Dominic Speller explains

To date, 153 million domain names have been registered globally under 21 generic top-level domains (gTLDs) and 249 country code top-level domains (ccTLDs). But, says ICANN, users are demanding more, as the current set of gTLDs (such as .com and .org) cannot support much further expansion; they are literally running out of space.

‘Introducing new gTLDs is central to fostering choice and competition in domain registration services, and as such is significant to the promotion of ICANN’s core values,’ said Tim Cole, chief registrar liaison for ICANN, at the INTA meeting in May. ‘The evolution of the domain name space towards an enhanced diversity of services and service providers must be planned and managed effectively to preserve the security, stability and global interoperability of the internet.’

The proposed policy to guide the introduction of these 90 new gTLDs was created by the Generic Names Supporting Organisation (GNSO) in late 2007. It addressed technical, economic, operational, legal, public policy and other considerations, in order to develop the strategy for creating and awarding the new gTLDs; its intention to create a straightforward, fair and efficient process for allocating new gTLDs.

But, according to Josh Bourne, president of the Coalition Against Domain Name Abuse, who also spoke at the event, domain name abuse is already a multimillion-dollar problem, and adding new gTLDs to the mix is likely to make the problem even worse. ‘In the last year alone, cybersquatting grew by over 200%,’ he said. ‘There are two simple reasons why: it makes money and it is difficult to police.’

Increasing the pressure
This isn’t the first time that ICANN has launched a new set of gTLDs. In 2000, it also launched what it refers to as a ‘proof of concept’ TLD round, in which aero, biz and .coop were made available for registration. This was followed by a ‘sponsored’ TLD round in 2003 when asia, .mobi and .job were launched. The new round of gTLDs, operates on a different concept; this time, ICANN is calling on businesses to nominate and apply for new gTLDs.

The implications for the brand owner are immense, which is why ICANN says it is also launching a new programme for WHOIS compliance and contractual compliance, and is reviewing Registrar accreditation. It accepts that domain tasting, among other questionable practices, has grown exponentially since 2004; in fact, it says, 10 tasters accounted for 95% of all .com and .net registrations in January 2007. It is working to eliminate such practices, but commentators and brand owners are worrying that it may be too little, too late.

‘Identifying infringers is difficult,’ argues Josh, ‘that’s why most domains are recovered without trademark owners even seeking damages; often, they are just grateful to have had the websites returned – and often pay just to speed things along.’ It is this struggle to penalise infringers, combined with the difficulty of registering and enforcing the proposed new set of gTLDs that is causing the most concern.

Managed well, a domain can both promote and protect a brand, but crafting a secure web strategy is not simple. Few brand owners can afford the time or money needed to register every variant of their brand and product names, including possible typos. This is likely to make defensive registrations a thing of the past; instead, rights holders will need to develop proactive strategies that reduce the possibility of infringement.


MITIGATE YOUR RISK

Prevention is better than cure, says Sam Hendry of Melbourne IT

The domain name landscape is changing dramatically. The proposed addition of 90 new gTLDs (which is likely just to be the start of expansion in the domain name industry) will rule out the possibility of a strategy of defensive registration (if it hadn’t already been); meanwhile the rise of domainers and their ability to make money out of domain names has also taught brand owners a few lessons on how to develop a fully-functioning web strategy.

And yet, even today, some of the world’s highly-recognised brands don’t have a clear or efficient strategy for their online presence. Most still consider domain names to be an IT function or, at best the responsibility of the marketing department. But trading online comes with its own legal challenges, and companies need to understand the risks involved in order to mitigate them.

‘In the last year alone, cybersquatting grew by over 200%. There are two simple reasons why: it makes money and it is difficult to police.’
-Josh Bourne

There are always opportunists looking to trade off your goodwill and they are becoming increasingly sophisticated in the way that they are doing so. Being able to monitor the web to find those infringers is the first challenge; deciding how to pursue them is the next. That’s where CPA and Melbourne IT come in. Our monitoring services provide reports that prioritise risk, supported by recommendations on the action to take, whether that be a cease and desist letter, a demand for site shutdown or a solution for retrieving the domain name anonymously or via a DRP or UDRP (Uniform Dispute Resolution Procedure, see right).

Ultimately, to be successful, domain name strategies need to be a combination of business and IP. It’s not simply that marketing departments and IP departments work together (although it is increasingly important that they do so), but IP needs to be considered alongside all forms of business opportunities, whether they relate to acquisitions, product launches or expansions. The IP department needs to look at the domain space in all relevant jurisdictions, prioritising value and brand approach. Partnering with an expert can help make that process more efficient for the brand owner.

ICANN isn’t just looking to launch 90 new gTLDs. It is also nearing the end of its research into International Domain Names (IDNs). These are different from ccTLDs in that they use local vernacular alphabets, so that, for example, a domain name can be accessed in Chinese script. Under current plans, over 100,000 non-Roman characters will soon become available, as well as the opportunity to register domain names reading from right to left. The new IDNs are due to launch alongside the new gTLDs early next year. We’ll be looking at how the process will work in the next issue of IP Review.


For tips and advice on how to create an efficient online protection strategy, visit www.cpaglobal.com or email dspeller@cpaglobal.com


A CLIENT'S VIEW

Sebastian van Barneveld, IP Rights manager at Endemol International, explains how the UDRP process helped them to retrieve bigbrother.com

When Endemol launched its now ubiquitous Big Brother series, few could have predicted the worldwide success it would become. But successful it did become – on an enormous scale. The fly-on-the-wall reality show has been a primetime hit in almost 70 countries, remaining the top TV format by turnover in 2007, eight years after it was first broadcast in the Netherlands.

The series takes its name from the all-seeing, all-controlling leader depicted in George Orwell’s 1984. And while this character has played an important role in the show’s success, it has also led to some complications for the company’s legal department, most notably when, in 2005, the company was forced to pursue the owner of bigbrother.com for trademark infringement.

‘Big Brother was first broadcast in 1999, whereas the first registration of the .com site took place in 1995,’ explains Sebastian. ‘The first registrant had not selected it as a means to infringe our brand, but that all changed when it was purchased by a company in the British Virgin Islands in 2004.’

Building a case
That the new registrant was aiming to profit from Big Brother‘s reputation was obvious. ‘The home page implied that the site was related to the show,’ says Sebastian. ‘It even included the sentence “All the information about the popular reality show” and linked to promotional websites, including Endemol’s official site.’ Unfortunately, the website also included links to pornographic material, which risked harming Endemol’s reputation and providing unsuitable content to fans, particularly younger ones, of the show.

Working with Melbourne IT, Endemol acted quickly, dispatching cease and desist letters to the unlawful owner of the website. When the registrant did not respond, Endemol chose to pursue the infringing party via ICANN’s UDRP.

In order to make a case against alleged infringers under the UDRP, injured parties must base their complaint on three main elements. They must show: (i) the domain name is identical or confusingly similar to a trademark or service mark to which the complainant has rights; (ii) the owner has no rights or legitimate interests in respect of the domain name; and (iii) the domain name had been registered and is being used in bad faith.

‘Point (i) was relatively easy to show,’ says Sebastian. ‘Big Brother had already been launched in 37 countries back then – and we had registered trademarks in each of those jurisdictions.’ Point (ii) is often a stumbling block for trademark owners, particularly if the existing owner is able to show that they have a legitimate interest in the website or brand name. In the case of bigbrother.com, this could have easily been the case, given that the name has been around a lot longer than the TV show, but Sebastian says the fact that the website was clearly attempting to link itself to the TV show made the case more straightforward. ‘The infringing party attempted to argue that “big brother” was too generic a name to belong to us, but the fact the content of the website was clearly about the TV show helped make our case,’ he says. ‘The website’s links to pornographic sites also afforded them little defence when it came to establishing that they were using the name in bad faith.’ ICANN agreed, ordering that the name be returned to the TV production company in 2007.

Today, www.bigbrother.com is just one of hundreds of domain names that Endemol’s legal department manages, which begs the question: how do they choose which ones to register and when? ‘We try to protect all of our TV shows by registering up front,’ says Sebastian. ‘But we never know how big a show is going to become. As a general rule, once it’s been sold into three or four countries, we know it may be a hit. That’s when we start looking at an international IP strategy for the show. Of course, we can’t register every variation of the name, so we choose to protect our strongest formats and the ones we need straight away. We then assess each show on a country-by-country basis.’


This article was first published in IP Review, issue 23

User Comments

Post a comment