It’s finally happening. The generic top level domains (gTLDs) are here. You can reserve your domain name under .company, or .shopping, or .london, or .food, or .university, or dozens of others, each managed by a private entity that has jumped through the necessary hoops and paid the ($100K+) fees.
If you’ve been following this saga for the last 10 years, you know that some people consider gTLDs to be a great opportunity. Others consider them to be yet another example of those who manage the Internet running roughshod over the intellectual property rights of others. Given the number of my legal clients who deal with cybersquatters (and have effectively no legal recourse to protect their brands), you’ll have to put me in the latter camp: gTLDs are a mess—a legal quagmire for legitimate businesses.
Trademarks are an indicator of the source of goods or services. Domain names are arguably the most prominent use of most trademarks. They are the primary and first means by which billions of consumers connect with a given source of goods and services.
Other key indicators that are managed outside the purview of government—think Twitter handles, Facebook pages, Pinterest boards, etc.—all have procedures to protect brand owners from illegitimate use of trademarks. But the most important, the domain name itself, remains subject to all manner of abuse by infringers.
The organization that manages all domain names is called ICANN–the Internet Corporation for Assigned Names and Numbers. They have been, shall we say, unconvinced by the pleas of trademark owners concerned with cybersquatting, exploding legal costs, lack of clarity and certainty in the domain name system, and plain old unfairness. Of course, ICANN did provide the trademark clearinghouse for gTLDs. Admirable if inadequate.
The net result of gTLDs coming online is that every major brand owner that can afford to now must worry about a potentially unlimited number of gTLDs under which enterprising domainers may attempt to register versions of its brand. Conversely, major brand owners may choose to try to register (and manage) their brand within every new gTLD. If you want to understand why a trademark owner should be constrained to go through this never-ending expense and risk management, you’ll have to ask ICANN.
Or, you can consider the proposal below.
The domain name system as we have known it for decades (think of www.facebook.com as an example of a domain name) functions based on users’ tacit recognition of its legitimacy: certain domains are “real” or “official”; there is a de facto standard under which everyone gets their information from the same sources–the sources controlled by ICANN’s rules.
But there is no reason that it has to be this way. There is no reason that a separate system of domain names couldn’t operate in parallel to the current system, eventually replacing (usurping?) its role as the official and preeminent system for commercial traffic or for brand owners’ websites.
The domain name system (DNS) is nothing more than a distributed method by which web browsers convert domain names (e.g. www.apple.com) into numeric internet protocol addresses (192.168.0.1). Before law school, when I was in the software industry, I set up many DNS servers on my desktop. It’s not rocket science. (See my old book, The Complete Guide to Linux System Administration.)
There should be a new system of domain names that recognizes the rule of law and that is dependently linked to trademark rights, because those rights are vetted and subject to legal processes in virtually every nation on earth.
The logical choice for an arbiter and manager of such a parallel domain name system is the International Trademark Association–INTA.
When INTA holds its Annual Meeting in Hong Kong next week, more than 9000 representatives from virtually every major brand in the world will be in attendance. If those brand owners were to agree upon and support a parallel system of domain name management, the world’s economic powers would likely follow along like so many Facebook fans.
Is a parallel system feasible? It’s been done many times before, but generally in the name of subversion or anarchy, rather than enhancing the rule of law. (See the entry for Alternative DNS Root on Wikipedia.)
How could this be done? It requires three things.
First, one needs to set up a computer as a DNS root server. This is the easy part. The software is free. Technical and security work adds to the eventual complexity as network traffic increases, but it’s easy to start small.
Second, one must establish protocols and procedures for registration of domains and resolution of disputes. This is where INTA would change what ICANN has done. (ICANN does have a dispute resolution procedure but it has permitted millions of trademark infringements to continue with essentially no legal remedy.)
Suppose, for example that the rules of an INTA-managed domain system provided terms such as the following:
- A. After requesting registration, each domain is subject to a 30-day opposition period during which 3rd parties can object based on pre-existing rights.
- B. Trademarks can be included within domain names only if such marks are registered in the jurisdiction associated with the corresponding top level domain; or, for top level domains not linked to a specific locale, a trademark must be registered in at least 3 jurisdictions taken from a list representing major world economies.
- C. Descriptive terms are granted to applicants based on an open lottery system.
- D. Domains that are not used within a given period and are not associated with the owner’s registered trademark or a version thereof (so as to provide for typos etc.) would be considered abandoned and would be shut down and returned to public availability.
- E. Dispute resolution rules would expressly provide for consideration of trademark rights and provide other explicit guidance to arbitrators (something lacking in ICANN’s UDRP).
- F. Trafficking in domain names could be prohibited except under specific circumstances, such as for domains transferred as part of a transfer of related trademark rights. (This is similar to prohibitions in the United States on naked licenses and trademark assignments without accompany goodwill.
Obviously these are just initial ideas to show the types of rules that could protect intellectual property rights under a parallel DNS system.
The third and final step to making this happen would be to publicize a new DNS system so that consumers and internet service providers would begin “pointing” to the new INTA-managed DNS servers, thus making the new system ”live.”
This step is where skeptics will say “Ah hah! This can’t be done.” It’s true that it isn’t an easy transition, but it’s certainly feasible.
Imagine for a moment that the top 50 brands in the world–or the top 500–placed a few full-page ads in the Wall Street Journal and similar publications announcing this change. Imagine that a few large advertisers like Nike, McDonalds, Coca-Cola, and Wells Fargo included a new domain name as part of their next major ad campaign, along with simple instructions to access the new system. Steps like these would quickly create the legitimacy needed for a new DNS system to thrive.
Would this break the existing system? Not at all. The DNS software that we all rely on today is configured to pass on requests that can’t be processed to other servers. An INTA-managed DNS server could receive any DNS requests. Any that were part of the pre-existing system and were not recognized would simply be passed on to an old DNS server, which would provided a response just as it does today.
Doesn’t this leave the existing system unchanged? It does. The Internet gurus love competition, open systems, freedom. Let them compete for DNS traffic. The goal of a parallel system is to undermine the legitimacy of the ICANN model by providing an alternative that has the stamp of approval of the brands (the websites) that comprise the bulk of Internet traffic. My hope is that a parallel DNS system would cause consumers to regard other DNS addresses as inherently suspect and “unofficial,” thus preventing many of the legal headaches (infringements) of the current system. Eventually, it might even lead ICANN to be more responsive to legal issues as it faced a rapid decline in its “market share” in providing DNS services.
Wouldn’t all this be expensive? I ask: Compared to what? Maintaining the technology and a supervising organization requires some expense. But how many millions of dollars are currently being spent to fight cybersquatters, to monitor spurious registrations, to maintain a portfolio of defensive registrations and so forth. The goal should not be to spend as little money as possible today. The goal should be to achieve the lowest total cost and strongest long-term protection of intellectual property rights.
Isn’t this just a crazy idea? Yes. I admit it. Every critical change starts out being viewed as crazy. But how else can progress occur? When existing institutions fail utterly to protect our rights, we have an obligation to create new institutions that will. I think someone famous once said that.