Domain Wars

Trademark owners say cybersquatting has gone too far -- and they're fighting back.

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Deutsche questions the need for new TLDs, given the limited success other new domains have had compared with .com. Nearly three quarters of all domain-name registrations under ICANN's administration are in the .com domain, and 92% are in the .com, .net and .org domains. She alleges that the primary motive for adding GTLDs, driven by registrars, is to sell more defensive domain names to intellectual property holders.

Paul Levins, vice president of corporate affairs at ICANN, calls Deutsche's assertion "mischief-making." Use of the newest GTLDs, such as .tel and .mobi, is growing, he says. Plus, two ICANN-commissioned economic impact reports, published in March, show that increased competition would benefit consumers, adds Levins. He notes that intellectual property concerns "can be addressed through existing legal mechanisms and appropriately designed ICANN procedures for protecting intellectual property."

But businesses worry that, without additional protections, it will be impossible to protect their brand names online in an expanded GTLD universe. Goodendorf, for instance, frets that IHG will be forced to buy the same set of defensive domain names for each new top-level domain. "That will run up our costs even more, [and] it's going to become more confusing for people to find what they're trying to find."

Intellectual property owners complained loudly to ICANN through the IPC, one of several advisory groups to the ICANN board. In response to those concerns, ICANN asked the IPC to come up with recommendations.

It formed the Implementation Recommendation Team, which on May 29 issued a report to ICANN listing suggestions for dealing with the new top-level domains. These include the establishment of a list of trademarked names that can't be sold in the new GTLDs, a provision for rapid takedowns of sites that blatantly violate trademarks, disablement of offending domains instead of transferring ownership and requiring the complainant to pay for their registration, and a mechanism for challenging any new registry that is involved in cybersquatting or colludes with cybersquatters.

A decision on the report's recommendations is expected, possibly as early as this month, following a period of public comment and discussions this summer. It's unclear how many of the report's recommendations will be adopted, but the IPC's Metalitz says ICANN has done a good job so far in responding to the concerns of intellectual property holders. "The board recognized that there is a problem. They won't roll out the new GTLDs until that problem is resolved," he says.

Unfortunately, the proposal applies only to new GTLDs, even though the biggest problems are tied to the existing ones, Metalitz says. Even if every recommendation is adopted for the new GTLDs, getting the same rules applied to existing domains like .com will be tough, he adds. "The problem is, you have entrenched interests that are resistant to change."

However, ICANN may be able to apply the new rules as existing registrar contracts expire, Levins says. "We may be able to retrofit the features that are in the new GTLD agreements to address abuse."

Meanwhile, the cybersquatting pandemic shows no signs of abating. While ICANN has made strides in improving oversight through its audits of registrars, the potential financial gains from cybersquatting remain too high and penalties too small to stop the growth in domain-name brand abuse, let alone deter the practice. That's why the IRT recommendations, even if applied to existing top-level domains, aren't likely to completely solve the underlying problem.

But the GTLD issue has intensified the focus on trademark abuse in domain names, and the matter now has ICANN's full attention. So the GTLD proposals could be a catalyst for change -- eventually. For Metalitz and the intellectual property owners he represents at the IPC, those recommendations amount to one small step in the right direction.

This version of this story originally appeared in Computerworld's print edition. It's a modified version of an article that first appeared on Computerworld.com.

Related Reading

How to Protect Your Brand

Cybersquatters are siphoning away increasing numbers of users from the Web sites of businesses large and small. Using variations on trademarked names, cybersquatters may lure prospective customers to pornographic Web sites, malware sites, sites hawking counterfeit goods, or pay-per-click advertising sites, some of which lead viewers to competitors' products and services.

They're doing so right under the noses of trademark holders, but many companies remain blissfully ignorant of what's going on -- or how it can affect their business. In addition to losing revenue from customers who never reach their true Web sites, companies may find that cybersquatters have irrevocably damaged their reputations.

While cybersquatters have been around almost as long as the Web itself, the problem is getting worse. What should you do to protect your business? We asked for tips from legal professionals, as well as from experts at brand-abuse monitoring vendors and companies such as Lego and InterContinental Hotels Group (IHG) that have successfully fought cybersquatters. Here's what they had to say.

1. Establish a policy to deal with the problem. Take the time to create a detailed policy, then follow up with surveillance and policing, says Peter Kjaer, an attorney at Lego.

2. Monitor new domain registrations. IHG uses a monitoring service that alerts the company when potentially infringing domain names are registered. Those services aren't cheap -- basic monitoring services from Cyveillance, for example, run $5,000 to $10,000 per year. "But at least you can identify unauthorized registrations and know what's registered and who's registering it," says Lynn Goodendorf, global head of data privacy at IHG.

Incomplete or fictitious registration information is a tip-off that the entity is not aboveboard, she says.

Organizations that do their own monitoring often use Google to see if common misspellings and other variations on a trademarked domain name have been registered, says Doug Isenberg, an attorney at The GigaLaw Firm. The Domain Tools Web site allows Whois lookups of trademarked name variations to see they've been registered as domain names. It also offers other monitoring and lookup services.

When checking for misspellings of your brand, remember that not all keyboards are in QWERTY format, says James Carnall, manager of the cyberintelligence division at Cyveillance. "Stay on top of what devices are selling well and what logical thumb mistakes are being made on those devices," he suggests.

3. Build a portfolio of defensive domain-name registrations. This includes common misspellings or other errors users might enter when typing your brand names. Registering a domain name can cost as little as $6 per year. Recovering one from a cybersquatter costs much more.

4. Check Your trademarks. Make sure your trademark portfolio is up to date in all parts of the world, Isenberg advises. "A trademark application can go a long way in a domain-name dispute," he says.

5. Pick your battles. "You can't go after every cybersquatter out there. But you can go after those causing the most damage or creating the most problems for you," Isenberg says. That means prioritizing domain-name abuse cases. Lego, for example, looks at how much traffic the offending site receives, as well as the domain name and content on the site, before making a decision, Kjaer says.

6. Pursue violators. Depending on the circumstances, victims may be able to sue under the federal Anticybersquatting Consumer Protection Act or the Lanham (Trademark) Act. If content infringes on copyright, it may be possible to have the site taken down immediately -- sometimes the same day -- under the Digital Millennium Copyright Act.

Lawsuits are expensive, but they can work, Isenberg says. Picking a few high-profile cases can act as a deterrent. "You create a reputation that you aggressively pursue [cybersquatter] domain-name registrants," he says.

But the least expensive approach is to file a complaint with a dispute-resolution provider such as the World Intellectual Property Organization or the National Arbitration Forum. The complainant must successfully argue that the domain name is identical or confusingly similar to the brand name, and that the owner has no rights to or legitimate interests in that name and is using it in bad faith.

The process takes about two months from complaint to decision. If the complainant wins and the owner does not file an appeal, the site must be taken down within 10 days of the decision.

7. Get involved. Join the Intellectual Property Constituency, which represents the interests of trademark and copyright owners to the Internet Corporation for Assigned Names and Numbers, the organization that coordinates the Domain Name System on the Internet.

"Many decisions made by ICANN have a critical impact on the interests of intellectual property owners who seek to protect their rights online," says IPC President Steve Metalitz. "The Intellectual Property Constituency is a key channel for input into those decisions."

Robert L. Mitchell is a freelance writer and editor. Previously, he was a national correspondent for Computerworld. He also served as an editor at Network World and BYTE magazine, and was part of the editorial team that launched TechBeacon.com.

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