On November 16, 2000, the Internet Corporation for Assigned Names and Numbers (ICANN), the non-profit global manager of the domain name system, approved seven generic top-level domains (gTLDs) in an effort to relieve the overcrowded .com, .net and .org domains. Of nearly 200 suggested gTLDs, these seven were selected from a pool of forty-seven applications submitted by groups vying for the right to operate the new domains. The newly approved gTLDs include: .info for general use, .biz for businesses, .name for individuals, .pro for professionals, .museum for museums, .coop for business cooperatives and .aero for the aviation industry. Top-level domains considered but not approved included .kids, .xxx, .auction and .web. If adopted by the National Telecommunications and Information Administration (NTIA), these seven gTLDs are expected to be available in mid-2001.
These proposed gTLDs present new challenges and opportunities for trademark owners who seek to protect their intellectual property from cybersquatters or those who may attempt to register all or part of the owner's trademark under these new domains. To combat such trademark infringement, the new gTLD operators offered several plans to protect trademarks in their new gTLD proposals. One proposal (http:/www.icann.org/tlds/info1/description_of_tld_policies.htm#e15)permits registered trademark owners a ninety (90) day period (a so-called "sunrise period") to pre-register domains comprised of their marks before the new gTLD is open to the general public. Another proposal, (http:/www.icann.org/tlds/travel1/sectiond13-2.htm)offered by the newly appointed operator of the .biz domain, suggests the implementation of an "Intellectual Property Notification Service" (IPNS) Proposed Trademark Registration
Under the IPNS proposal, a trademark holder would be able to register its trademark information (exact trademark, trademark number, country of origin, date of first use, etc.) and, for a nominal fee, receive monitoring of that trademark against others who may attempt to register it. If a domain applicant attempts to register a domain that conflicts with the trademark owner's IPNS entry, then the domain applicant would be notified that the domain is claimed to be the intellectual property of another. The applicant would then be directed to the proposed Uniform Charter Dispute Resolution Policy/registration agreement (a proposed dispute resolution policy as described below) and informed that the applicant's license may be revoked if found to be acting in bad faith. Despite such warning, however, the IPNS watch service would not prevent the applicant from registering the potentially infringing domain. If the applicant does register the mark after receiving the warning notice, any party who has engaged the IPNS service for that mark would be informed that another party has registered the domain and also provided with an explanation of the steps to pursue a dispute. Although the IPNS plan does not set forth specific details (http:/www.icann.org/tlds/travel1/sectiond13-2.htm) it does provide that "[t]he Intellectual Property Notification Service will provide an additional level of protection for holders of registered national trademarks and will work in conjunction with the UCDRP to discourage incidences of domain names being registered in bad faith."
New gTLD Controversy
Notwithstanding the good intentions of the new gTLD operators, the proposed gTLDs have generated significant controversy since ICANN's announcement two months ago. Critics express concern that the additional domains will merely create confusion and redundancy with the existing .com sites and cause numerous and expensive trademark disputes. Advocates for the new gTLDs, however, claim that the new domains will make it easier and more efficient for consumers attempting to find specific information. Advocates further claim that the restrictions imposed on the new domain registrations will differentiate them from the prior domain registrations. For example, while a typical registrar might currently charge as little as $20 per year to register a .com domain, WiredNews (http://www.wirednews.com/news/business/0,1367,40270,00.html)reports that a .biz domain price is expected to be $2,000 to register and $150 to maintain. Likewise, .biz domains are expected to be different from existing domains by restricting content solely to business and commercial purposes (which was the original, but unenforced, intent of the .com designation.).
Perhaps the most significant of the proposed gTLDs is the .biz domain. As described in the .biz operator's website, (http://www.neulevel.com/html/f02.html) "Dot Biz domain names will be offered for registration by businesses for commercial uses only and not for personal use. The TLD will be restricted to any individual, organization, or entity that desires to advertise their business and/or conduct commercial activities on the Internet." To help ensure that the .biz domain and other new gTLDs are used solely for their intend purposes, the .biz operator has suggested implementing a "Uniform Charter Dispute Resolution Policy" (UCDRP) which would augment ICANN's existing Uniform Domain Dispute Resolution Policy (http://www.icann.org/udrp/udrp.htm)(UDDRP) to incorporate a charter for intended purpose domain name spaces. The UCDRP would also permit third party complainants to seek cancellation or transfer of a .biz domain name on the grounds that the domain name is not being used for a legitimate business purpose and is either (a) confusingly similar to the complainant's trademark, or (b) likely to cause the complainant to suffer injury to its property. This proposed revision is a significant departure from the current UDDRP that requires the claimant to demonstrate "bad faith" for the registration and use of the suspect domain.
ACLU Concerns
While the merits of the proposed gTLDs are in debate, several organizations have unified to attempt to postpone the adoption of these seven gTLDs. On January 16, 2001, the American Civil Liberties Union (ACLU) expressed concern in a letter to the U.S. Department of Commerce (http://www.aclu.org/congress/l011601a.html) that approval of the seven proposed generic top-level domains by NTIA without further process may be unconstitutional. These cyberrights groups cite media reports that NTIA is prepared to approve the proposed gTLDs without additional process as the catalyst for their letter which specifically seeks reassurance that such reports are false and calls for public hearings prior to adoption of any additional gTLDs.
The ACLU's concerns about the process by which TLD's other than country-code domains will be created fall into two main categories. The first is its belief that the Administrative Procedure Act (APA) applies to any decision by the Department of Commerce to create a new TLD outside the previously existing procedures described in the relevant Internet Requests for Comments (RFCs). The ACLU believes that any attempt by the U.S. Government or its agents to decide such an important matter of public policy without adherence to the principles of notice and public participation violates the APA and would be illegal and potentially unconstitutional. Second, the ACLU believes that the processes used by ICANN to choose these seven gTLDs, this particular group of seven registry operators and the particular conditions which will be imposed on users of these new gTLDs are all "woefully inadequate by any measure." For example, the ACLU stated that ICANN's decision-making process "got off to a bad start" by requiring a $50,000 non-refundable fee from domain name applicants, thus skewing the pool towards those organizations that could "afford a $50,000 lottery ticket." The ACLU warns that rubber-stamping ICANN's recommendations and failing to allow the public to comment before approving these gTLDs would be arbitrary and capricious and constitute a denial of basic due process.
ACLU Solution
The ACLU proposes a solution that includes the introduction of a "multitude of new top-level domains, both commercial and non-commercial," to escape risk of treading on another entity's intellectual property rights. This way, claims the ACLU, in a world with both McDonalds Farm of Scotland as well as McDonalds Hamburgers restaurants, "McDonalds.com can easily coexist with McDonalds.farm." Although it is unclear whether opposition will postpone the implementation of the proposed gTLDs, it is clear that new gTLDs will eventually be adopted. Accordingly, trademark owners may consider a strategy to defensively register particular domain names or otherwise take advantage of the proposed mechanisms such as the IPNS watch service.
FTC Warning
Currently, there is no way to register any of these new gTLDs and the U.S. Federal Trade Commission (http://www.ftc.gov/bcp/conline/pubs/alerts/domainalrt.htm)recently issued a consumer alert warning about "scam artists" offering services along these lines. Among other recommendations, the FTC advised consumers to protect themselves by "[a]voiding any domain name pre-registration service that asks for up-front fees, guarantees particular top level domain names or preferential treatment in the assignment of new top level domain names." Notwithstanding the fact that these proposed gTLDs have not yet even been approved by NTIA, Network Solutions, Inc. (http://newdomains.networksolutions.com/purchasing/welcome.html) is offering an opportunity to "request the names you want" for the .biz and .info domains. Network Solutions does not guarantee that one's request will ever come to fruition and specifically disclaims that "the requestor will still be required to register the desired domain and there is no indication what the requestor will be given any preferential treatment for requesting a partical [sic.] domain in advance." Further information regarding the implementation of these proposed gTLDs and recent gTLD scams is available at ICANN. (http://www.icann.org/)
Second-Level Domains
While .com domains are unlikely to be unseated as an entity's primary website in the near future, the new gTLDs and the .pro operator's proposed second-level domains (http://www.icann.org/)(i.e., .med.pro, .law.pro, .agr.pro, .auto.pro, .acct.pro, .fin.pro, etc.) suggest a future Internet domain architecture that may resemble the current Usenet conventions. For example, future Internet users may find themselves surfing over to arterhadden.law.pro in order to access the Arter & Hadden LLP website. Likewise, users knowledgeable of such a tiered domain architecture may one day go to greyhound.trans.biz to access Greyhound Lines. transportation business or greyhound.npo.info for a non-profit greyhound rescue organization. While these changes do not appear imminent, it's possible that the seven proposed gTLDs could be available in several months. Accordingly, it is important for today's trademark holders to prepare for tomorrow's Internet.
Conclusion
In view of the proposed gTLDS, it is generally a prudent and relatively inexpensive practice for trademark owners to avoid domain disputes or expensive litigation by registering domains which are likely to cause confusion or which will infringe upon their trademarks. Thus, business owners, corporations and professionals with a web presence should review the charter requirements of the proposed gTLDs and, if appropriate, should seriously consider registering with the .biz, .pro and/or other proposed domains when these domains become available. Likewise, to the extent that it does not infringe upon another's intellectual property, trademark owners should consider defensive registrations of slight derivations of their trademarks including common misspellings. The extent of such defensive registration is part of an overall strategy for effectively managing your intellectual property portfolio and should be guided by appropriate legal counsel.