Some describe the Internet Corporation for Assigned Names and Numbers (ICANN) as the indispensable regulator for a fair, open and accessible internet - others, as a monopolistic and tyrannical manipulator dominated by unmistakable US ties and interests. Whatever way you see it, the fact is that on June 26 ICANN took a decision with immense implications on the structure of the world wide web, on its mechanics, economics and regulation.
The relaxation of the rules governing generic top-level domain names (g-TLDs ‒ such as .com, .net, and .org) and of country-code (cc-TLDs ‒ such as .mt or .uk) shall mean that any entity, including companies, organisations and individuals could eventually run their own domains - their own addresses. For instance, Simonds Farsons Cisk plc could run the domain .cisk, and Microsoft could run .microsoft or .billgates. Of course this is expected to come at high costs, ranging from anywhere between $150,000 to $500,000, a move which is expected to stifle domain registration by individuals but which may arguably impede or reduce cybersquatting or domain name tasting/testing or dropcatching.
On the one hand this decision is undoubtedly bold and beautiful, in that it has opened up the web to innovation, creativity and scope for unique internationalised domains in all languages and distinct scripts - freedom of expression. On the other hand, this decision may prove to be bad and beastly, giving rise to severe competing claims, endless disputes, controversial decisions and overly expensive settlements. Generic terms such as .movies or .worldcup could become the subject of rigorous auction and bidding wars. Web surfers may become confused by the multitude of new domain suffixes, thus finding it more difficult to remember URLs and information across the web may become more fragmented.
One downside is that protection of trade marks (TM) is bound to become more costly and time-consuming, requiring TM owners to register as many combinations that one may possibly conceive of and in as short a time as possible. Today not only must the TM owner register all the combinations of associated domain names but must also register all combinations of relevant top-level domains. This is because domain names are unique identifiers designed to use alphanumeric letters to represent the IP binary numbers in human-readable form, making it easier for one to remember web addresses. Moreover their registration is carried out on a first-come-first-served basis and trade marks are never automatically reserved. So whereas only one www.joeborg. com can be registered, all individuals named Joe Borg have an equally legitimate interest in registering that domain name with all its derivatives and under all top-level domains.
Indeed, ICANN has stated that there will be an objection-based mechanism for trademark owners where their arguments for protection will be considered. Nevertheless, experience with domain names shows that this is no simple matter. Dispute settlement mechanisms, such as WIPO's UDRP are today already inundated with claims, some legitimate, others abusive. Attaining a successful transfer or deregistration of a domain name under the UDRP is very challenging and burdensome. It must not only be "identical or confusingly similar" to a TM or service mark in which the complainant has rights but the respondent must in addition have "no rights or legitimate interests" in respect of the domain name and must have registered it in "bad faith".
Redress by means of traditional trade mark law and court action may also be sought for an infringement of the intellectual property right. Indeed the laws and procedures of the applicable jurisdiction must be followed, subject to high legal fees and costs.
In Malta, for instance, the Trade Marks Act defines three types of TM infringement, (i) use of identical sign on identical goods, (ii) identical sign on similar goods or similar sign on identical goods where there is a likelihood of confusion and (iii) use of a sign which is identical or similar to the TM on goods which are not similar, when the mark has a reputation and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark. Of course the mere fact of a domain name registration which is similar to a TM does not necessarily infringe a trade mark.
ICANN has stated that it shall require applicants to go through a review process, ensuring that the proposed domain is not offensive to "public morality and order". How this subjective test is to be carried out and what benchmark of "morality and order" is to be upheld will undoubtedly be contentious and open to worldwide controversy.
Indeed, ICANN's decision can be considered akin to an expansion of virtual development zones - new highways, new streets, new signage... but perhaps also new potholes, new dead-ends and new black-spots. In the end, will you find your next holiday destination by inserting .hotel, .country, .vacation, .btala, .vaganza or would you rather rely on a simple search in google? It is of course still to be tested.
• Dr Gonzi specialises in ICT Law with Fenech & Fenech Advocates.
The relaxation of the rules governing generic top-level domain names (g-TLDs ‒ such as .com, .net, and .org) and of country-code (cc-TLDs ‒ such as .mt or .uk) shall mean that any entity, including companies, organisations and individuals could eventually run their own domains - their own addresses. For instance, Simonds Farsons Cisk plc could run the domain .cisk, and Microsoft could run .microsoft or .billgates. Of course this is expected to come at high costs, ranging from anywhere between $150,000 to $500,000, a move which is expected to stifle domain registration by individuals but which may arguably impede or reduce cybersquatting or domain name tasting/testing or dropcatching.
On the one hand this decision is undoubtedly bold and beautiful, in that it has opened up the web to innovation, creativity and scope for unique internationalised domains in all languages and distinct scripts - freedom of expression. On the other hand, this decision may prove to be bad and beastly, giving rise to severe competing claims, endless disputes, controversial decisions and overly expensive settlements. Generic terms such as .movies or .worldcup could become the subject of rigorous auction and bidding wars. Web surfers may become confused by the multitude of new domain suffixes, thus finding it more difficult to remember URLs and information across the web may become more fragmented.
One downside is that protection of trade marks (TM) is bound to become more costly and time-consuming, requiring TM owners to register as many combinations that one may possibly conceive of and in as short a time as possible. Today not only must the TM owner register all the combinations of associated domain names but must also register all combinations of relevant top-level domains. This is because domain names are unique identifiers designed to use alphanumeric letters to represent the IP binary numbers in human-readable form, making it easier for one to remember web addresses. Moreover their registration is carried out on a first-come-first-served basis and trade marks are never automatically reserved. So whereas only one www.joeborg. com can be registered, all individuals named Joe Borg have an equally legitimate interest in registering that domain name with all its derivatives and under all top-level domains.
Indeed, ICANN has stated that there will be an objection-based mechanism for trademark owners where their arguments for protection will be considered. Nevertheless, experience with domain names shows that this is no simple matter. Dispute settlement mechanisms, such as WIPO's UDRP are today already inundated with claims, some legitimate, others abusive. Attaining a successful transfer or deregistration of a domain name under the UDRP is very challenging and burdensome. It must not only be "identical or confusingly similar" to a TM or service mark in which the complainant has rights but the respondent must in addition have "no rights or legitimate interests" in respect of the domain name and must have registered it in "bad faith".
Redress by means of traditional trade mark law and court action may also be sought for an infringement of the intellectual property right. Indeed the laws and procedures of the applicable jurisdiction must be followed, subject to high legal fees and costs.
In Malta, for instance, the Trade Marks Act defines three types of TM infringement, (i) use of identical sign on identical goods, (ii) identical sign on similar goods or similar sign on identical goods where there is a likelihood of confusion and (iii) use of a sign which is identical or similar to the TM on goods which are not similar, when the mark has a reputation and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark. Of course the mere fact of a domain name registration which is similar to a TM does not necessarily infringe a trade mark.
ICANN has stated that it shall require applicants to go through a review process, ensuring that the proposed domain is not offensive to "public morality and order". How this subjective test is to be carried out and what benchmark of "morality and order" is to be upheld will undoubtedly be contentious and open to worldwide controversy.
Indeed, ICANN's decision can be considered akin to an expansion of virtual development zones - new highways, new streets, new signage... but perhaps also new potholes, new dead-ends and new black-spots. In the end, will you find your next holiday destination by inserting .hotel, .country, .vacation, .btala, .vaganza or would you rather rely on a simple search in google? It is of course still to be tested.
• Dr Gonzi specialises in ICT Law with Fenech & Fenech Advocates.