COMPUTERGRAM INTERNATIONAL: OCTOBER 24 2000 + ICANN Clashes with Domain Firms Over New TLDs By Kevin Murphy Some of the dozens of businesses that have recently formed with revenue models based on the scarcity of good internet addresses are feeling threatened by the imminent introduction of new top-level domains into the domain name system. DNS regulator ICANN, the Internet Corporation for Assigned Names and Numbers, has found itself caught in the middle of a number of potential trademark infringement battles with registries over some of the applications for new generic top-level domains. The Los Angeles-based non-profit will introduce new TLDs early next year, selecting from 44 proposals currently on the table. Lawyers representing three registration companies over the last month filed complaints with the organization over some of the applications, claiming their rights would be infringed if certain gTLDs (specifically, .biz, .site and .web) were introduced into the DNS. All three were subsequently shot down in responses from Louis Touton, ICANN's general counsel. Two companies reckon the introduction of .biz as a rival to .com would hurt their sales. At least four of the applications ICANN staffers are currently poring over propose to operate a registry for .biz, including Affinity Internet Inc, iDomains Inc, KDD Internet Solutions Co Ltd and JVTeam LLC. Shepher Corporation (Biz.com Inc) is complaining that its business of registering third-level domains (eg computerwire.biz.com, microsoft.biz.com) will be rendered useless by a new .biz TLD, which seems fair comment. According to Dallas, Texas-based Shepher's lawyers, the confusion created by the introduction of .biz (which, one imagines, would be minimal given that biz.com has been operating less than a year) would make ICANN liable for contributory trademark infringement. Likewise, Missouri-based Economic Solutions Inc reckons a .biz would mess with its plans to market the country-code TLD .bz as a phonetic variant of 'biz'. "A .biz or .bus TLD, if granted, would substantially infringe the rights of ESI," the company's attorneys claim in a letter to ICANN, "...we insist that any application submitted which proposes .biz... be rejected." ESI has operated under contract with the government of Belize, which owns .bz, since mid-1999. Touton, in his responses to both companies, cites a recent decision by the US Patent and Trademark Office that TLDs are not trademarkable, coupled with a court decision to the same effect in a suit between Image Online Design Inc and the Council of Registrars (currently, we're told, under appeal). Besides, Touton argues, biz.com is a second level domain, and .bz is meant "to serve the needs of the internet community in the country of Belize", not US firms that want something that sounds like "biz". A company with a similar issue to Shepher is Carlsbad, California-based Global Domains International Inc (WebSite.ws), the firm that operates as the registry for .ws under contract with the government of Samoa (formerly Western Samoa). Like .bz, WebSite.ws bases its entire business on the fact that a good .com is damn hard to come by, and alternatives are needed. New gTLDs would seriously reduce that urgency. In particular, the company takes issue with the proposals of .site and .web by Afilias LLC, the consortium of 19 leading registrars that wants to operate a new open .com-style gTLD. "[Our lawyers] would not like to see the market get confused with a .web/.site and .ws since they both bring meaning to 'web''site'," company president Alan Ezeir said in an email to Touton. "It seems ironic," Touton replies, "that your company, which is providing registrar services in the .ws domain under a one-year contract with the .ws domain's sponsoring organization would raise legal concerns about the establishment of .web and .site TLDs on the basis that some customers have been encouraged to think its stands for 'website' rather than Western Samoa." He again cites the USPTO and IOD/CORE decisions as legal precedent for the unenforceability of TLDs as trademarks. No new TLDs have been introduced since before the internet became the massively popular medium it is today, and the vast swaths of red tape surrounding bringing in new domains means .com is virtually exhausted and alternative naming systems have arisen. The trend for US firms to buy contracts with the governments of developing nations to get access to cool-sounding ccTLDs to market as gTLDs has proved quite popular. The two-character ccTLDs are assigned to countries by the ISO 3166-1 list, administered by a body within the International Standards Organization. ICANN accepts these ccTLDs into the root based on their presence on the list. But many countries are too small or poor to need their ccTLDs, and this is where the US firms step in. California-based dotTV Inc has found itself a potentially lucrative niche due to its 10-year deal with the Pacific island nation of Tuvalu for .tv, for example. But it is not just the entrepreneurs that have responded to deficiencies in the DNS that could come off badly with the introduction of new TLDs. Other markets that could be affected include the secondary market for domains, represented by name auction/resale services. These also rely on the lack of good .coms to increase the value of names, and from a perusal of these sites, the market does not appear to be particularly mature. A spokesperson for Register.com Inc, which recently bought name auction player Afternic Inc, said "anything good for registrations will also be good for the secondary market," and doesn't see any negative impact. Name speculators are bound to populate these auction sites with names under new TLDs the second they are introduced. Likewise, companies operating alternative web naming systems like Redwood City, California-based RealNames Corp, reckon new TLDs will create a greater demand for their services. "New TLDs will make such a disaster of the DNS," people will cry out for RealNames, said the company's CEO Keith Teare. "The DNS is already broken for five reasons," Teare told ComputerWire, "This [new TLDs] adds a sixth." According to Teare, the regular DNS lacks extensibility, has poor scalability, and lacks foreign language support, all problems largely due to limitations in BIND (Berkeley Internet Name Domain, the software most name servers, including the root, use). In addition, RealNames has the advantages of natural language input and will shortly support voice for mobile access, which the DNS does not. The sixth reason Teare doesn't think the DNS will survive is that new TLDs will confuse matters so much, people won't know whether to enter .com, .web or .biz or whatever after the name they are seeking, and will turn to RealNames-like systems to simplify matters. But RealNames will have to spend the marketing dollars to change the mindset of millions of surfers before this ambition is achieved.
