What's in a name? ICANN and the Net name game

At its most recent meeting on 26 August in Santiago, Chile, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a policy designed to break the back of domain name lawsuits.

ICANN wants to create a third-party arbitration process where companies and individuals can challenge one another for the right to hold certain Web addresses without having to drag each other through the courts.

A recent spate of high-profile legal cases has pushed the issue into the public eye, but in reality the battles have been going on since business took to the Net.

The problem, according to Nick Lockett, Internet expert at law firm, Sidley & Austin, is simple: "Trademarks clash head on with the Internet. Trademarks are geographic and the Internet is international by definition.

"An awful lot of big companies are suing over domain names and we are increasingly going to see cases like these - this is a challenge to the whole of intellectual property law," he added.

Unfortunately the solution is much more complex.

Jonathan Robinson, MD of UK registrar NetBenefit, is glad ICANN is trying to move disputes outside of the traditional legal system. "Potentially the biggest problem is the ignorance of the judges," he said. "You have got to have a court that understands the issues - but expertise is limited at this point."

ICANN has taken its initiative from WIPO (World Intellectual Property Organisation) which released a report earlier this year calling for more transparency and accountability in the registration process.

In a testimony to a US congress subcommittee in July, Francis Gurry, assistant general director and legal council to WIPO, claimed making registrars check existing trademarks during the pre-registration process would "increase significantly the time and cost of obtaining a domain name registration".

Instead he recommended the introduction of a dispute-resolution procedure designed to stop individuals registering versions of "famous" trademarks in "bad faith".

This practice - dubbed cybersquatting - has long been a fear of corporations desperate to protect their reputation online. But according to Lockett, WIPO and ICANN could both be missing the point. "We are going to have to change the law," he says, "the US has ideas of a cybersquatting law - but typically cases are not that clear cut."

As national boundaries are broken down by global ecommerce, he warns, more and more companies with the same, or similar, names will begin to bump into each other.

"The new WIPO proposals protect mostly big companies," claims Lockett. "And this could stifle ecommerce. New entrepreneurs often only check nationally for trademarks and then later encounter overseas companies [with the same name] online, who stamp on them.

"Lawyers are going to have to completely re-write how trademarks work on the Internet, but they are going to have to try and protect smaller companies as well as multinationals," he adds.

Lockett recommends taking a much tougher line on national domain extensions - like .uk or .us - and limiting the number of Web address held by one company. "There is a real commercial incentive for big companies to abuse the system - they can find it easier to sue rather than buy the domain names they want."

NetBenefit's Robinson believes the WIPO dispute resolution could work for new domain name extensions created in the future, but warns that the organisation may have missed the boat on existing top level domains like .com and .net. "The precedents have already been set," he says.

But Robinson remains optimistic that solutions will be found: "The combination of ICANN and WIPO is a pretty strong one. A huge amount of effort is going into sorting this out - but the solutions aren't easy."