Registration of Internet domain names has become increasingly difficult over the past two years because of the lack of name availability. A Wired survey in April of 1999 found that of 25,500 standard dictionary words, only 1760 had not been registered.

This situation can hardly be surprising given the overall low-cost of name registration, and the potentially high payoff if the registered name is later sold to the highest bidder. But, the fact that most common words have been registered by someone, has created a dearth of virtual real estate available for the would-be Internet business.

Although the Anti-Cybersquatting Protection Act, [15 U.S.C. ?1125], and the Uniform Domain-Name Dispute Policy have addressed the more flagrant abuses such as the registration of someone else?s trade name and the related attempts to sell it back to the rightful owner, these mechanisms do not get at the core problem of name availability.

Many have long argued for the need to increase the number of top level domain names (TLD), beyond the existing ones (dot-com, dot-org, etc.), even suggesting that the number of TLDs should be unlimited, provided that the name can be supported by the technology that routes Internet traffic. [See, e.g., the links and articles posted at www.icannwatch.com]. To address this perceived need for additional virtual real estate, the Internet Corporation for Assigned Names and Numbers (ICANN) has decided to expand the number of TLDs. On November 16, ICANN announced that registrations will be available for seven new TLDs: dot-aero, dot-biz, dot-coop, dot-info, dot-museum, dot-name, and dot-pro.

Early criticism seems focused on the boring nature of the TLDs chosen, and the fact that only seven new TLDs were included, despite the submission of 44 potential contenders. [See, e.g., Washington bureau chief for Wired.com Declan McCullagh?s commentary in the Wall Street Journal.]

Whether or not the criticism of ICANN is well-founded, the solution whereby additional TLDs are created doesn?t seem to address the root cause of the domain name shortage: a naming convention that allows nearly unrestricted registration of letters, numbers and words, albeit limited by suffix.

The effect of the decision to expand the number of suffixes will be borne by business, both existing and new, which must scramble to register all variants of its names with the new suffixes to keep ahead of the cybersquatters and typosquatters, troll the new suffixes to stay competitive and cope with the additional confusion and inefficiency created. Was that White House dot gov? Or White House dot Museum?

This series of articles focuses on the impacts to existing domain name registrations that occur with each increase in the number of TLDs. These impacts can be grouped around two general themes: (1) the need to register under the new suffixes to protect existing trademarks; and, (2) how the process that creates TLDs contributes to the current shortage of TLDs. This article focuses on the first of these impacts, and seeks to answer the question: why register your domain name with a new suffix?

TRADEMARK PROTECTION AND THE NEED FOR VIGILANCE IN DOMAIN NAMES REGISTRATION

The Lanham Act (trademark act) gives the owner of a unique mark or name a limited monopoly in the use of the trademark. [15 U.S.C. ?1051 - 1127] Federal trademark law grants the owner rights not otherwise available, including jurisdictional access to the federal courts and the ability of the owner to get an injunction to prevent others from infringing the mark [15 U.S.C. ?1125(a)]. However, there is a price to be paid for this monopoly ? constant vigilance. Trademarks can be lost through abandonment as when the owner does not take action to maintain control of his mark. [See, e.g., 15 U.S.C. ?1115(b)(2), ?1127, and Abdul-Jabbar v. General Motors Corp. (9th Cir. 1996) 85 F.3d 407, 411 ('the law ceases to protect the owner of an abandoned mark. ... Accordingly, courts have held that an unused mark may not be held in abeyance by its original owner.')]

For example, an argument can be made that the failure to register the domain name with the new TLD suffix is tantamount to abandoning the mark with respect to that suffix. By not pursuing registration in the seven new TLDs, anyone else may be able to register the domain. Under these circumstances, a competitor could obtain a toe-hold in a business arena that the dot-com or dot-org registrant has spent millions developing.

In subsequent litigation, the competitor will simply argue that the name was abandoned with respect to dot-museum, dot-info, or dot-aero. The chances for success are simply unknown at present. But, businesses and individuals have strong incentives to re-register their domain names with the new suffixes, and have all of their domains pointed to the main contact location to keep control over their customers, and to protect their trademark rights.

At the same time, 'fair use' of a trademark is a defense to infringement, even on the Internet. For example, if a trade-name is used as a site name that criticizes the legitimate owner, the law views this as fair use under the Lanham Act. [See, e.g., Bally Total Fitness Holding Corp. v. Faber (C.D.Cal.1998) 29 F.Supp.2d 1161.] In the Bally case, Mr. Faber had registered the name 'Ballysucks.com.' While not widespread, these registrations are not uncommon. To prevent traffic to a site critical of a business, most existing businesses attempt to register all variants of the business name, including the derogatory names, so that they can maintain control over the site. Usually, these sites point the casual browser back to the main DNS location. Consequently, for the current dot-com or dot-org registrant, she or he must police these variations in order to control the business? image. With seven new TLDs, each variant also will need to be registered with each suffix.

These repeated registrations underscore a fundamental flaw in merely expanding the number of TLDs ?- the 'valuable' virtual real estate will be gobbled up by the current owners of dot-com, dot-org or dot-net who are trying to protect their existing turf. (Is it any coincidence that ICANN owns the rights to 'www.icann.org' and also 'www.icann.com'?) On the other hand, if the name isn?t already valuable, it isn?t likely to be re-registered by its owner in the seven new TLDs, and these names may be available. But, what this really means is that at the end of the day, all that will be left for registration in the seven new TLDs will be the less valuable sediment of the domain name world. Look for these registrations to be available next spring on www.ebay.museum.

Multiple registrations is a cost of doing business in the new economy. Expect the addition of the seven TLDs to end up costing businesses plenty. Current plans are for dot-biz registrations at $2,000 each, which will be passed on to the consumer.

Re-registering an existing name 10 or 20 times in each new TLD may become cost prohibitive. But, repeat registrations are just the beginning. The costs of policing online names: searching, locating, and shutting down infringers, typosquatters, and cybersquatters can be a full-time occupation that doesn?t add to the bottom line for most businesses. In the next column, we?ll look into the process that got us to this point.