The group that could trigger a land rush for new Internet domain names will begin meeting this week in Japan to address the thorny issues involved in a proposal to expand the line-up of generic top-level domains beyond current ones such as .com, .net and .org.
Most observers expect the Internet Corporation for Assigned Names and Numbers (ICANN) to approve a handful of new top-level domains, such as a .shop one, during a four-day series of meetings that's scheduled to begin Thursday in Yokohama. One of the key issues for companies involved in this process is the protection of trademarks once new top-level domains are introduced.
The prospect of added generic domains, and the expected rush by companies and individuals to register names that use them, "is something that's the nightmare of every brand owner, certainly," said Sally Abel, an intellectual property attorney at Fenwick & West LLP
ICANN - the non-profit organization that's responsible for administering the domain name system, root server management and other IP address issues - has tried to make it easier for companies to take trademarks from cybersquatters through its Uniform Domain-Name Dispute-Resolution Policy. Known informally by the acronym UDRP, the system provides a mechanism for the World Intellectual Property Organization in Geneva to use in arbitrating domain name disputes.
The US Congress also passed a law last year that makes it possible to fine cybersquatters up to $100,000. But the dispute-resolution process still puts the burden on companies to find cybersquatters and pursue them.
And companies already face the daunting task of trying to track soundalike domain-name registrations. Cybersquatters not only register obvious trademarks, but they often make subtle changes that create confusingly similar domain names, such as adding a hyphen to a name. Having more than 200 country-specific domains around the world multiplies the problem.
But companies have little choice other than to proactively try to protect their names, Abel said. "Registering one's trademark is really a form of insurance," she noted. "You may not be planning to expand to Germany today, but you want to register to make sure that you can be there tomorrow."
ICANN has considered creating a list of famous trademarks, but such proposals run into controversy over just what constitutes a trademark. Moreover, some domain registrars don't want to be given the responsibility for filtering domain name registrations, said Jeff Field, CEO of registrar NameSecure.com. Such a plan would put registrars in "the position of trying to oversee all the trademark issues," he said.
Along with new generic top-level domains, observers said, ICANN also may introduce a series of "chartered," or closed, domains that limit registrations to specific companies or organizations - for example, .airline. These domains would work in much the same way .edu has been limited to educational institutions.
But closed domains could open up other issues. For example, the Labor Policy Association, which represents human resources executives at major corporations, has sent a letter to ICANN opposing the introduction of a .union domain.
The association's letter claims that such a domain could create confusion and administrative problems by leading employees to think that they're represented by a union formed by their company. On the other hand, proponents say a .union domain such as Nike.union or Microsoft.union could help foster communication between workers.
For most companies, though, the .com domain will continue to reign supreme, Field predicted. "There is always going to be a certain cache to having a .com," he said. "For one thing, it's going to show that you've probably been around."