ICANNWatch: The classic example I like to use is mcdonalds.com. If I register the name and my name is not McDonald, I might send a letter to McDonald's and say, "Give me free Big Macs, and I'll hand over your domain name." Then McDonald's could file a suit under the UDRP.
However, if I register mcdonalds.com and my last name is McDonald and I have a farm, have been using the Web site for years to sell my farm products to the public, and I've never contacted McDonald's the hamburger chain, then McDonald's, the hamburger joint, wouldn't have a case against me.
Q: Let's say that the new top-level domain names are approved, and one of them is .store, for example. What happens if one business registers the same name under .store as an already established .com business?
ICANN: We don't know. The rules under the UDRP deal with names that are the same or confusingly similar, but only in the .com, .org, or .net domains. So that's one of the things that still needs to be worked out.
ICANNWatch: Big problems related to that will be coming. In the domain space right now, there are very few top-level domains, so there's room for only one McDonald's, for example. But if you had a mcdonalds.hardware and mcdonalds.car, for instance, nobody in their sane mind could say that McDonald's the hamburger chain could legitimately claim rights across both of those. Where do the name trademark boundaries end?
We'll just have to see what ICANN comes up with to handle those kinds of disputes.
Q: I think a big fear that small businesses have is that after they register a name, they'll have to defend it against big companies that claim to have rights to it. What will the dispute policy do for them?
ICANN: If you're looking at this from a small-business perspective, the dispute policy makes everything cheaper and faster, and there's no need for the small business to go to court.
And the problem of "reverse domain name hijacking," where a big company comes after a little company, doesn't really happen. Our dispute policy prevents that. People now have this rule that says the complainant has to show they have a legitimate trademark and have also witnessed a bad-faith use of their name [ by a hijacker] .
For example, a small company called Clue Consulting had a Web site called clue.com. Hasbro [ which makes a game called Clue] tried to get [ the] name back. But the courts said no, as they had been using the name for their business, and Hasbro therefore did not have a right to the name. In this case, the small company got to keep its name.
ICANNWatch: Small businesses will get beat up instantly if they try to fight against the big companies over domain names. The big company will write them a letter saying that they have violated their trademark, and whether they did or didn't, it's a matter of the court system. The small-business person can't really fight back; they'll have to pay for their name's defense. With big businesses, it's no problem; they have great lawyers, so they just pay. For the small companies and individuals, it's not such an easy task.
And right now, arbitration mechanisms won't necessarily work well because they're set up in such a way that leaves them open to conflicts of interest, perhaps in the big businesses' favor. What happens is that arbitration organizations are chosen by the complainant. That implies that if the arbitration organization rules against the person or company too often, that person or company will choose a different arbitration organization the next time. So no matter how honest an arbitration organization is, you have real problems unless it's a fair and random selection.
Q: Would you recommend that small businesses register their names as trademarks to prevent any problems that might come up?
ICANN: I couldn't really speak to that. But, for example, clue.com was not a registered trademark, but [ the small business that was using clue.com] had not used the name in bad faith, so they got to keep it.
So if you look at it that way, if businesses would just use the names they register for legitimate purposes, they won't have to really deal with the big companies coming after their names.
ICANNWatch: You can trademark your name, but even when you do that, you'll have problems. That's because trademark law is very local. What you trademark in one state [ isn't] necessarily [ considered to be] trademarked in the other states in which you do business. So big businesses will come after you anyway.
Q: Should people preregister in possible new top-level domain names before the names are approved by ICANN?
ICANN: There were some proposals at the last ICANN board meeting in Cairo about which names to register, but no resolutions were made. The only thing that was decided is that there should be new top-level domain names, and maybe 6 to 10 of them would be a good number. There was a general consensus about it, but that's all.
I know there are some services offering preregistration of .web and other domains, but because there has been no decisions at all about what new top-level domain names will come out, preregistration is probably too premature right now.
ICANNWatch: They should first read the cybersquatting law and decide whether or not the preregistration is in violation. But it is difficult to determine that. I mean, what if you register a name that you fully intend to use in the future, and someone complains that you're trying to hijack the name or sit on it so that you can sell it later?
