Because a domain name permits Internet users to locate information on he application seeks registration for an identical name already in use or the applicant is obviously attempting to register a name to which it is not entitled.
Because of the volume of applications, NSI is unable to detect trademark problems in each domain name registration application. Each applicant must make certain undertakings and representations, including that it is unaware of any infringement of the proposed domain name on the rights of a third party with respect to trademark or other intellectual property rights. NSI has also adopted a Domain Dispute Resolution Policy under which a trademark owner may challenge the use and registration of a domain name that violates the trademark owner s legal rights; if the domain name owner fails to provide evidence of its own registered trademark, NSI may place the disputed domain name on hold pending resolution of the dispute.
Legal attention has started to shift to TLDs, and in particular non-country code generic TLDs ("gTLDs"). The currently used gTLDs include .com for commercial entities, .edu for educational institutions, .net for computers of network providers, .gov for federal government offices and agencies, .mil for the U.S. military, .int for international organizations and databases, and .org for other organizations.
The Internet community has been pressing for additional gTLDs for several reasons. First, NSI registered its one millionth domain name in March of this year; almost all are in the .com gTLD. This gTLD is a limited resource not varied by class of product or service, as the international trademark system is. Further, the monopoly over gTLDs now held by NSI appears unhealthy to many commentators (and became the subject of a Justice Department antitrust investigation in early July). In addition, the expansion of the number of gTLDs will make it more likely that potential registrants will be able to register a preferred name or trademark as a SLD. Finally, as the number of gTLDs increases, people may stop using "companyname.com" as an address locator in favor of relying on increasingly sophisticated search engines.
In response to this demand, an International Ad Hoc Committee ("IAHC"), composed of representatives from several leading Internet organizations, adopted a gTLD expansion plan in May of this year. The IAHC plan would initially create the following seven additional top level domains, to be operated by multiple registrars: .firm for businesses or firms, .store for businesses offering goods to purchase, .web for entities emphasizing activities related to the World Wide Web, .arts for entities emphasizing cultural and entertainment activities, .rec for entities emphasizing recreational and entertainment activities, .info for entities providing information services, and .nom for those desiring individual or personal nomenclature (i.e., a personal nom de plume).
The IAHC plan received broad support but has not been universally acclaimed. The loudest opposition has come from the operators of several Internet service organizations, who had started operating "alternate" gTLDs accessible only through their proprietary services, in anticipation of the coming expansion of gTLDs. One of those operators unsuccessfully challenged the IAHC plan in Image Online Design v. Internet Assigned Numbers Authority, etc. et al., a Los Angeles Superior Court case in which my firm represented the Internet Assigned Numbers Authority. In response to claims by the plaintiff operator of a .web registry on the so-called enhanced domain name system that it had some quasi-contractual right to operate .web exclusively as part of the new gTLD system and that the IAHC plan constituted unfair competition under California antitrust law, the court ruled in May of this year that the plaintiff had no protectible proprietary interest in ".web" because of the nature of Internet TLDs and their use in facilitating communications on the Internet. Further, the court stated that the IAHC Plan does not violate antitrust law because its purpose is to encourage rather than stifle competition. Finally, the court noted, a California trial court should be careful in taking any action that might disrupt the entire Internet and potentially destabilize this important communications medium.
In part because of these concerns, the U.S. National Telecommunications and Information Administration ("NTIA") issued a request for public comment earlier this month, seeking comment on the IAHC plan, the role (if any) for the government in the expansion of gTLDs, the principles that the government should apply in evaluating proposals for the registration and administration of Internet domain names and the trademark rights that should be protectible on the Internet relative to domain names.
Several conclusions appear in order for owners of valuable trademarks and trade names. First, in managing these names and marks, owners must now consider the Internet as part of their strategy for protection and exploitation of their assets. This strategy should include not just the principal business name but also variations and product names. In addition, businesses should consider using an Internet watch service to advise of new domain name registrations covering similar names. Further, as new gTLDs become available, supplemental registrations should be considered. The new gTLD plan being implemented may result in a "gold rush" of trademark owners, current domain name owners and speculators seeking SLDs in the new gTLDs. Finally, as with any new development affecting intellectual property rights, the new gTLD plan will likely make trademark/domain name dispute resolution more unpredictable.