Jason S.T. Kotler is a lawyer at the Toronto law firm of McMillan Binch and a member of the firm’s Corporate Commercial Group.

By now everyone is very familiar with domain name suffixes that either end in .COM, .NET, .ORG, .CA or similar country codes. In fact, the companies you work for have likely already chosen, registered and promoted their own domain names for their websites and e-mail.

Well, don’t get too comfortable yet – get ready for the next round of disputes over the latest ‘top-level domain names’ (or ‘TLDs’).

ICANN widens the web world

At last count there were 20 million .COM and four million .NET and .ORG names registered worldwide. Most Internet commentators say that easy-to-remember addresses have all been used up.

In response to major lobbying on behalf of domain name registrars and other e-commerce interests, the Internet Corporation for Assigned Names and Numbers, the independent corporation that oversees the Internet’s addressing system, recently approved seven new generic TLDs this past November to join the ranks of .COM, .NET and .ORG. It is the first address expansion in more than a decade. Included in the list are:

* .BIZ for businesses

* .INFO for general information

* .NAME for individuals

* .PRO for professionals

* .AERO for aviation

* .COOP for co-operatives, and

* .MUSEUM for museums.

ICANN claims that the introduction of new domain names will improve navigation of the Internet, minimize the risk posed by cybersquatters and promote competition in the domain name registry system.

Initially, there will be confusion for businesses and their potential customers and very slow global acceptance or understanding of the new TLDs and their meaning or use, but in the long run ICANN hopes the new TLDs will cure the Internet real-estate crunch.

What’s in a .NAME?

Here’s a rundown of four of the seven new generic TLDs that ICANN proposes will be introduced by late summer 2001:

.BIZ: This TLD is designed for businesses. As the prime real estate in .COM has all dried up, .BIZ aims to create new opportunities for companies that were not quick enough to register their domain name of choice. The reality is that the concept behind this TLD is so similar to existing TLDs, that owners of .COM, .NET and .ORG addresses will surely try to claim the equivalent in .BIZ as a preventative measure to stop others from cybersquatting or otherwise infringing their trademarks and business names.

.INFO: This TLD has unrestricted use – it is a true catch-all, since just about everything online qualifies as information. One of the purposes behind the domain name expansion is to facilitate the ease with which consumers can find content and search the Web and establish online identities, so it is questionable whether creating ‘.INFO’ will in fact help consumers to do so.

.NAME: This TLD is meant for individuals, like Bill.Smith.Name. As there can only be one Bill Smith in the Internet world, the reality is that most individuals will be forced to register under the other TLDs.

.PRO: A TLD divided into subdomains for doctors (.MED.PRO), lawyers (.LAW.PRO), accountants (.CPA.PRO), and other business professionals to follow. Many of the same people who claim .NAME, .COM and .BIZ domains may also be inclined to register .PRO – just to be ‘professional’.

Only legitimate trademark

holders need apply?

There is apprehension in the industry that the new TLDs will be arbitrarily distributed the way .COM, .NET and .ORG were and therefore be subject to cybersquatting. In response, ICANN vows that it will take steps to impose restrictive criteria so as to ensure that new Internet addresses such as coke.biz will only be awarded to legitimate trademark holders.

An ICANN official recently told a U.S. congressional subcommittee that the introduction of the new domains would not lead to an increase in cybersquatting. Members of the subcommittee said they were concerned that trademark holders would be obliged to register their names in each new domain to fend off cybersquatters, creating administrative headaches and reducing the names available in each.

Officials from two registry companies (interested parties in the implementation of .BIZ and .PRO) assured the subcommittee that they had methods in place to discourage cybersquatting, including checking all applicants for .BIZ addresses against a database of trademarks to ensure they did not violate existing trademarks and limiting addresses in the .PRO domain to qualified professionals such as doctors, lawyers and accountants.

ICANN has not outlined the types of trademark protection that will be afforded, and the reality is that the registrars’ proposed method may exclude business names, trade names and common-law trademarks which are not listed in the United States Patent and Trademark Office database. Consequently, those with a genuine entitlement to register a name may be arbitrarily disqualified. ICANN must also resolve how conflicts over trademark rights will be prevented or fairly disputed.

Further, ICANN has not yet confirmed whether there will be a ‘sunrise’ period during which time those with a legitimate trademark name claim may apply for consideration before the names are made available to the general public on a first-to-register basis.

Can you register

a new TLD now?

As the restrictions and limitations on individuals or organizations wishing to register are still to be determined, it isn’t yet possible to register for the new TLDs and ICANN has not authorized any registrars to ‘pre-register’ domain names.

ICANN warns that persons who attempt to pre-register a new TLD do so at their own risk and with no assurance that they will receive the pre-registered names once the TLDs become operational.

In fact, the U.S. Federal Trade Commission recently issued a consumer alert warning about ‘scam artists’ who were 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’.

As predicted, there is intense interest in these new top-level domains. Has ICANN, by approving these new domains, created a gold mine for the selected registry operators who will undoubtedly encourage trademark holders to register with them promptly to protect their brands? Some registrars are hyping the new TLDs by making outlandish claims like: ‘Will this be you, OhShootTheyTookMyDomain.Name?’

Some registrars that more than three million of the new domain names will be registered in the first minutes when they become available early this year. They also assert this will be the largest virtual real-estate land grab in history. According to the registrars, the race is on!

Protecting your dot-turf and how to get more .INFO

Will the addition of the .BIZ domain help or hinder you or your business? As there is already a suffix for commercial business, you can be sure that there will be a stampede by the owners of existing .COM domains to register .BIZ equivalents to avoid being held hostage by cybersquatters. Those who do succeed in grabbing .BIZ addresses which conflict with .COM sites might generate confusion or even lawsuits.

On the other hand, if you didn’t get the name you wanted the first time around, here’s another chance to change your domain name from the long and nonsensical phrase that you did register to a more precise and recognizable name (albeit with a new suffix).

At this point, here’s a plan of action that you may want to consider:

1. Think about the domain names your company is currently using and assess whether it would be beneficial to you or your business to have a shorter, more precise or more generic domain name address ending in a new TLD.

Remember that the registration of a well-chosen name should have value regardless of its top-level extension.

2. Monitor your closest competitors’ websites or websites with similar names to your company’s to get a feel for whether there would be shared interest in the new TLDs. For example, if you have the only OurCompany.com and no one else has registered the .ORG or .NET yet then there may well be little interest in the new TLD version of your address. On the other hand, the more generic your address is the more likely it is that there will be interest in the new TLDs.

3. Consider registering your trademarks in both the U.S. and Canadian trademarks databases as proof of eligibility for the new TLDs and in case there are any trademark disputes over domain name registrations at a later point in time.

4. Sometimes the best defence is a good offence. Have your IT department make a wish list of domain names to register. Then consider requesting these addresses from your existing registrar and other registrars to better your odds at registering the names when they go live.

Please note that requesting a domain name is a distinctly different process from registration. A TLD request is not exclusive (anyone may request the domain name), nor is there any guarantee that you will be able to register the domain name that you requested. Remember that no registrar should charge up-front fees, guarantee or give preferential treatment in the assignment of a particular TLD.

Even if you do not use these names, once they are registered as part of your company’s marketing plans, you can always link them to your existing website. The cost to register is nominal in comparison to the potential for lost business and cybersquatting.

5. Don’t believe all the hype. The present e-conomy has taught us a few lessons about puffed-up hyperbole. If your domain name is working for you then you may not have anything to worry about.

6. Continue to monitor the ICANN website (icann.com) for further TLD developments.

What about .CAnada?

A future Binchmarks article will address the .CA domain name situation in Canada and the recent implementation of the new and improved .CA registry system.

(This article contains general comments only. It is not intended to be exhaustive and should not be considered as advice in any particular situation.) *

-www.mcbinch.com