Liberalization of domain names: new legal battles in perspective

Liberalization of domain names: new legal battles in perspective

May 30, 2019

The liberalization of Internet extensions planned by the Icann promises to be a nice headache for brand owners. Two lawyers come back on the issues of this announcement.
At the 32nd International Summit, the Internet Corporation for Assigned Names and Numbers (Icann) has announced the liberalization of domain names and the transition to a new IPv6 technical protocol. Indeed, a new generation of domain names is about to emerge to overcome the shortage of Internet addresses. The policeman of the Web has finally mobilized because the 4.2 billion addresses that can house the IPv4 technical protocol will all be taken.

The solution proposed by Icann will allow an almost infinite number of addresses to coexist. This liberalization will make it possible to personalize domain name extensions, the latter, for their part, opening up to other (non-Latin) alphabets reinforcing the internationality of the Web. It was essential to mitigate the decrease in the number of Internet addresses available. In addition, the liberalization of the extensions will be a formidable tool of personalized communication. Let’s not forget either that it will be a significant revenue windfall for ICANN.

However, while issues related to domain name assignment, cybersquatting and trademark counterfeiting in cyberspace remain unresolved, lawyers are preparing to embark on a new legal battle in defense of major brands. As five years after the adoption of the new .aero, .biz, .museum, etc. extensions, companies that want to protect their brand will have to re-register domain names for all newly created extensions.

What will be the rules for selecting new extensions?

Moreover, beyond these old debates, new legal issues will not fail to emerge. Indeed, what will be the rules applicable for the selection of new extensions? Will Icann impose limits or will everything be possible? Will we be able to see .nazi or .races arise? Will it be possible for a society or an individual to grab the holidays?

Certainly Icann has already identified validation criteria for new extensions:
• respect for trademark law,
• prohibition to imitate existing extensions or to propose spelling variants,
• respect for the identity of a community recognized by its peers,
• respect for public or moral order.

For the first two criteria, interpretation is not difficult. This is an attempt by Icann to limit the chances of cybersquatting.

As for the last two criteria, however, they raise more questions. Indeed, one can well imagine the respect imposed on religions or regional communities. However, what about cults listed as sects in some countries but not in others? Similarly, it is common ground that the concepts of public and moral order vary from one culture to another.

Effective implementation

Finally, beyond these issues related to brands and the appropriation of terms, it is also necessary to question the responsibility of these private actors responsible for technically managing and marketing domain name extensions, and for the reality of the supervision exercised by the supervisory bodies, such as Icann, over the said players, particularly with regard to their more than likely multiplication.

In addition, public actors will have to learn to coexist with these newcomers. Indeed, in France for example, the decree of 7 February mandating Afnic (French Association for Internet naming in cooperation) to manage the attribution of domain names, is very much applicable (although Afnic does not not officially designated by the public authorities).

Icann has announced effective implementation of these new rules by the end of the year. The debate is now open on the modalities of articulation with the rules resulting from the decree, the naming charter of Afnic or with those of PARL (Alternative Dispute Resolution Procedure, administered by the WIPO Arbitration Center).”