New ICANN Domains Could Spark Legal Action

MARINA DEL REY, CALIFORNIA (11/20/2000) - There was a lot at stake for businesses and special-interest groups - issues that ranged from trademarks to the bottom line - in the process that was used to create top-level domains at last week's meeting of the Internet Corporation for Assigned Names and Numbers (ICANN) here.

The business benefit of the new top-level domains, especially the major .com competitor, .biz, remains to be seen. In any case, to protect their trademarks, businesses may have to act quickly and defensively to register all of their trademarks in the new domains to protect them from cybersquatters and subsequent legal action, observers said. Moreover, while the new domains create opportunities for inventive names, it's possible that legal challenges could be mounted against businesses that register a generic name - an, for example, that is already being used in the .com domain.

Operating a registry is potentially profitable if large numbers of people and businesses register a certain domain. Among the countries that saw that potential is Dubai, which sought to get the registry business for a .go domain as part of its national e-business strategy.

"Dubai is a natural hub between the East and West, and you need connectivity in the Middle East," said Lars Olof Kanngard at Dubai Internet City, a Dubai government-sponsored organization. But the effort was unsuccessful, as the ICANN board disapproved Dubai's .go application.

The Washington-based National Cooperative Business Association did win approval to run a registry for the .coop domain, which would be restricted to the approximately 750,000 business cooperatives worldwide. The association said consumers who specifically seek to do business with cooperatives would be able to locate them more easily if their Web sites could use .coop, said Paul Hazen, the association's president and CEO.

"Co-ops traditionally have not fit easily into .com," Hazen said. "We're not true investor-owned businesses." But neither do they fit into the .org top-level domain, he added.

Domain Disputes

One particularly contentious issue concerns the protection of corporate trademarks from cybersquatters after top-level domains are created. Intellectual property groups tried to persuade the ICANN board to ensure that any new top-level domains include "sunrise" provisions, giving trademark holders the right to register protected names before anyone else can usurp them.

Michael Heltzer, government relations manager at the International Trademark Association in New York, said the sunrise provision being being considered by ICANN would have its limits, however. For example, companies wouldn't be able to register creative misspellings or derogatory alterations - such as "xyzsucks" - to block others from using them. "It's not as much as we would like, but it's a start," Heltzer said.

Those limitations notwithstanding, the plan still has its opponents. David Corish, the owner of Functional Metal, a maker of custom lighting and ironworks in Los Angeles, argued that giving trademark holders first rights to pick out the domain names they want is unfair to small businesses like his. "It gives some companies access to domain names on a silver platter," said Corish, whose position is supported by the U.S. Small Business Administration.

The trademark protections will be part of ongoing negotiations between ICANN and the registries before the domain agreements are signed. Although they want to sign the agreements by the end of the year, ICANN officials said the new domains may not be available until the second quarter.

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