Cyber Law

Technology media is beginning to buzz about the advent of designer domain names from the Internet Corporation for Assigned Names and Numbers ("ICANN"), which oversees the development and administration of Internet domain names under its contract with the U.S. Department of Commerce. Since these changes may raise important concerns for our business clients, we explain some of the relevant issues below.

For several years, ICANN has been promulgating rules and soliciting comments on the use of custom Top-Level Domains ("TLDs") (read "brand specific" .[brand] or .[industry]) in order to expand Internet real estate beyond .com and its less used alternates by December 2009. A guidebook for applicants has passed its second draft. ICANN solicited comments from domain name stakeholders, including government, the technology community, current domain name registrars (the database operators who market and lease names), trademark owners (i.e., businesses) and legal groups who represent them, such as the International Trademark Association ("INTA").

By the end of January 2009, ICANN received over 1,000 comments, many of them highly critical of ICANN for moving too quickly to bring this paradigm shift to market and at what some perceive as an exorbitant cost. Custom domain names of this variety start at roughly $300,000 in ICANN charges and set up fees, compared to the $35 annual fee for the typical .com, assuming it is available.

For example, these custom names would allow an airline to buy .delta or Smith & Wesson to buy .gun, but is there a business advantage for this? Will this scheme sprout an additional crop of suffixes that businesses must register defensively as is often done with .net and .org? Simple counterfeits like .kom and .bizz are already prohibited under ICANN rules, but what process or authority will decide whether to allocate .delta to the air carrier trademark owner or its faucet maker counterpart; .austin to the city or the auto maker; .mayo to the clinic, the county or the condiment maker? Can .[your religion] be registered to a non-member or fall into the hands of a group with opposing views? Religious leaders have already begun to comment. Do legitimate business applicants lose to cyber speculators who then hold auctions among them? Does the purchase of a custom domain name represent a "deal", prompting marketing managers to be first in line to acquire their .[brand] or .[industry] as a back door to expanding market share? Should risk-shy managers in this weak economy say "no deal" to an untested change draining already limited funds?

Part of ICANN's risk analysis should include the effect that a shift to unrestricted domain names will have upon the current list of 14 simple ASCII gTLD suffixes (of which .com, .org, and .net account for 91% of all gTLD registrations) and approximately 230 two-letter country code ccTLDs. Trademark owners have criticized ICANN's process thus far for failing to provide safeguards or "rights protection mechanisms" to save brand names from malicious or fraudulent registration. In the past, for example, there have been sunrise periods allowing trademark holders the first opportunity to obtain domain names incorporating their marks. Many also question whether the considerable expense is justified, other than to help ICANN recoup its $13 million in accrued expenses for its administration of the Internet. Questions also remain over the effect this myriad of unique domain names would have on search engines. Security experts say policing malware and phishing will be more difficult across multiple domains. There are conflicting studies available on the Internet that reach opposite conclusions on whether the new domains will be more or less susceptible to attack. Most importantly, trademark owners will not only have to police someone trying to register their brand as a top level domain, but also as a second level domain tied to it such as delta.airline or macys.shopping.

As with all things online, we are cautiously optimistic that the market will ultimately settle the debate on whether the new domains are worth their risk and expense. Efficient market decisions are dependent upon market knowledge to accurately assess risk. Based on the majority of comments, it appears to be far too early for business leaders to decide whether custom domain names are a deal, where benefits exceed costs, or no deal, where exorbitant start-up costs and unanswered questions outweigh potential market benefits.