Brandowners Warn Against Cybersquatting, User Confusion From New Internet Domains

By Monika Ermert for Intellectual Property Watch
PARIS – Some think the Internet Corporation for Assigned Names and Numbers should have moved much faster to introduce new names in the internet to join the likes of .com and .org. Others moan about the widespread trademark infringement they expect to occur when the private internet governance body introduces several long-awaited new top-level domains. But the prospect of news about the next round in extending the global domain name space has brought them all to ICANN’s Paris meeting that might emerge as the largest in the organisation’s history.

More than 1,400 participants attended Monday’s opening day and every seat was taken in the new top-level domain (TLD) workshop Monday afternoon, where people fantasised about .moon, proposed .hiv or pointed to nearly finished proposals for .berlin – “the mothership of all city TLDs” that has been around for more than three years right now.

Susan Kawaguchi, global domain name manager for online trading site eBay, said her company would have a look at all new TLDs, but would not register in every new zone. From her point of view special interest TLDs like .aero – the TLD for the airline industry managed by Air Transport Communications and IT solutions (SITA) – are acceptable for the owners of big brands, but new, open TLDs that allow registration by anybody (and not limited to a special interest group or community) would require either registering or enforcing.

“Either way it is a lot of work,” warned Kawaguchi. Brandowners, she said, are not prepared to provide income for the new generic TLD registries during their sunrise periods during which early name registrations can be made.

Even more menacing sounded Jay Scott Evans, former chair of ICANN’s Intellectual Property Constituency and senior legal advisor for Yahoo. “Why should brand owners have to invest huge amounts of money to protect their brands,” he asked, simply because ICANN did not put the trademarks on a reserved list containing geographical names that all governments would have had to block in all TLD zones.

“The day is coming when some aggressive trademark owner will start litigation against either ICANN, the registry or the registrar,” Evans said. All of these parties knew that trademark infringement was a possibility, “because it had been happening for years and you facilitated it and are liable as a facilitator,” he charged. Brandowners should be protected because hundreds of thousands of their customers were misled by infringed or squatted websites, he said.

Caroline Perriard from Nestlé warned that users would be confused by too many extensions. Companies should register .nestlé or .ebay to profit from the domain name system extension, recommended Rob Hall, CEO, from Canadian Momentous. But the big brand owners are reluctant. Traffic would be forwarded to ebay.de or ebay.fr anyway, said Kawaguchi.

John Berryhill, an IP lawyer, claimed many “landowners” in cyberspace fear that prices would go down if there was a bigger supply of “land.” It is a question of whether colonisation of new continents would be allowed, Berryhill said, adding that trial and error and the choices of the seven billion internet users would lead to the winning TLDs.

Despite earlier ICANN consideration of a start of the new gTLD application process in 2008 the timeline given in Paris provides breathing-space for the concerned. Applicants for the new generic top-level domains still have to wait until the second quarter 2009 before ICANN will start accepting applications.

ICANN wanted to give newcomers at least four months after the publication of the final request for proposal that will be published by the end of the year or first quarter of 2009. The timeline should allow ICANN to reach out to newcomers internationally and create a level playing field between them and all the ICANN “cognoscenti” that were ready to go, ICANN Senior Vice President Kurt Pritz said in Paris. A number of city TLDs have been working for some time, especially .berlin, and are urgently waiting for the start. The New York City Council this week might give green light for .nyc, and the Paris mayor may take a position on .paris on Wednesday.

But details of ICANN’s complex procedure still have to be finalised.

Non-contentious gTLD applications have to pass through application, evaluation, delegation and approval phases. If there is an objection against the TLD name (on grounds of confusing similarity, rights infringement, morality or community objection) or the same string has been applied for by somebody else, additional procedural steps are necessary, including possible outside dispute resolution or auction for competing applications.

The final price structure so far is not available and possible refunding mechanisms for applicants who withdraw their applications during the procedure while expected to be possible are still not published.

In the end, the country code TLD (ccTLD) managers might win the race. Parallel to the discussions about the introduction of new gTLDs, a fast track for non-Latin-based ccTLDs is being pushed in Paris. Pressure to move in that regard is great, observers said. For instance, China is waiting to have test Chinese-language Internet domain name address zones registered in the root. And for the first time, a Russian observer participated in the ICANN meeting. “We would be very happy if ICANN would decide on the issue this week,” Vladimir Vasilyev, deputy director at the Ministry for Telecommunications and Mass Communications of the Russian Federation, told Intellectual Property Watch.

Only about a week ago, Russian President Dmitry Medvedev had announced that he would favour a ccTLD in Cyrillic. Now the Bulgarian State Agency for Information Technologies and Communications (SAITC) have joined their Russian colleagues and are pursuing the issue at the Paris meeting. In a letter to ICANN President Paul Twomey, SAITC announced that Bulgaria has decided to register and maintain the country code in Cyrillic.

ICANN consists of numerous constituent groups. In the preparatory talks of the ICANN Government Advisory Committee (GAC) and the Country Code Name Standing Organization (ccNSO), ICANNs body for ccTLD policies, governments clearly showed their muscles. An agreement or contract with ICANN for introducing the new non-Latin ccTLDs was not acceptable, said Chris Dispain, chair of the ccNSO. An original limitation to only one ccTLD per country has been erased from the current draft, because some countries use several scripts. Any objection procedure for the chosen string – that has to represent the countries name – was also unthinkable.

Not everybody in the community is happy that the ccTLDs by using the fast track procedure with much time for a regular procedure to talk about afterwards might start early. Neither side should disadvantage the other, said Chuck Gomes of VeriSign, speaking as a representative of the Generic Name Supporting Organisation at a GAC meeting. The ICANN Board will decide on Thursday which one will move and which one will not.

Monika Ermert may be reached at info@ip-watch.ch.