The headache of domain names

Domain names are increasingly hitting the headlines as a result of their having become very effective identifiers for individuals and businesses.  Even before a school teacher controversially registered the domain names, leoblair.co.uk and leoblair.com just one minute after the name of No. 10’s new addition was announced,1 domain names such as boo.com and lastminute.com have been receiving considerable media attention.  

The search for a short and catchy domain name upon which to build a brand for a business is becoming increasingly difficult because nearly all of the short and easy to remember domain names in the .com and .co.uk domains have already been registered. Unless your organisation is prepared to pay large sums of money for such a domain name, you may have to settle with a longer and less desirable alternative.

A number of “alternative .com” domains have, however, been launched; the most recent being the “World Site”.ws domain (originally the Western Samoan top level domain) only a couple of months ago.2  Unlike the earlier “alternative.com” forerunners such as .cc domain (Cocos Islands) and.io domain (British Indian Ocean Territory), .ws may take off. This is partly due to the popular registrar, “Register.com” advertising .ws under the same category as the .com, .net and .org  top level domains but also because businesses are increasingly becoming frustrated that they cannot register their desired domain name in the “commercial”.com domain. Several businesses, and perhaps those law firms which are Writers to the Signet, would prefer to have an email and website address which is catchy and only three or four letters ending in .ws rather than their present ten or eleven letters ending in.com or.co.uk.   

The possibility of businesses and organisations switching to alternative global domains from the traditional .com and .co.uk might be more likely than one may think. On 15th May the .tv domain (South Pacific island of Tuvalu) was re-launched and has reportedly received considerable interest from the broadcast TV industry.  Metro-Goldwyn-Mayer Studios for example have already acquired a number of .tv domain names  including UnitedArtist.tv, JamesBond.tv and 007.tv.3  At the beginning of May the “Market Place” .mp domain (Northern Marina Islands) was launched and corporate giant, Proctor & Gamble registered no less than 25,000.mp domain names based on their existing trade marks.  This registry is aimed as a haven for companies wanting to assure their customers that it is “really them”.4  As with the .ws registry, the registration process involves a search of the US Patent and Trademark Office database in an attempt to reduce the predatory practice of cybersquatting.    

Other new alternative domains which have recently been launched include the .md domain (Republic of Moldova) for the worldwide medical community and the .fm domain (Western Pacific island of Federated States of Micronesia) for radio stations. It may not be long before other “market” domains are launched and these might soon rule the roost in our ever increasing world of brands and products.

In addition to the practice of “re-launching” existing domain names for obscure countries and islands, ICANN is due to release seven new top level domains later this year to try and ease some of the pressure.  The “Magnificent Seven” as they are referred to on the GTLD website5 are .web, .shop, .firm, .info, .arts, .rec and .nom.  These stand for web-based activities, on-line & off-line shops, firms, information, arts, recreation and personal names respectively.

Businesses which have paid huge sums for their .com domain name may find that they may receive less of a return on their investment than they originally envisaged. New and improved website locator tools and search engines which will be the key to the success of WAP technology may also further reduce the prices currently being paid in the domain name market.  Perhaps Halifax, the mortgage bank may look back with something approaching regret having recently paid more than $1m (£628,000) for if.com, a sum believed to be the seventh biggest sum paid for a .com domain name.6

The Magnificent Seven coupled with the “alternative” registries, by opening up the domain name market will present many .com businesses with a further headache in relation to brand protection.  Even though anti-cybersquatting legislation has now been introduced in the US,7 many .com businesses will take the commercial view (and certainly UK businesses should) that it’s cheaper to register more domain names (at approximately $100 a time for 2 years) than take legal proceedings to protect a brand where the cost can be considerable and the outcome uncertain.

If the Prime Minister is determined to make sure that his son gets the domain name “leoblair.com” he might be pleased to learn that Julia Roberts was successful only a few weeks ago with her ground breaking application to WIPO to have the domain name, “juliaroberts.com” transferred to her from a “US cybersquatter” Russell Boyd8  WIPO does not, however, extend to .co.uk domain names (nor a number of “alternative” registries) and it might even be difficult with “leoblair.com” to establish an argument that Leo Blair has already acquired some form of “common law trade mark” to his name in the same way as Julia Roberts did. There is clearly still a gap in this area of law for famous people as with domain names based on geographical names and perhaps the Prime Minister might consider it cheaper to make an early submission to the GTLD.com registry for “leoblair.nom”. If he decides to buy one of the “alternative” domain names for his new son, then he will quickly discover that he has already missed out with the new .ws domain.

Stuart Hendry solicitor and member of the Murray Beith Murray Law Team