There's one way to win and that's to be first

By CHRIS BARTON

It's good to see the All Blacks have quickly staked their claim on the newest frontier of cyberspace - the dotinfo domains.

At least they've won something this year. Back in 1997 when they were doing much better on the field (beating Australia, remember that?) they were not so nimble in the virtual world.

Rugby News publisher Pro Sport Media sneaked in under their noses and scarpered with the holiest of New Zealand domains - allblacks.co.nz. It also scored rugby.co.nz.

The All Blacks struck back last year, securing the more highly regarded allblacks.com. And now - with the help of patent and trademark attorneys A J Park - they've kept the ball in hand with allblacks.info.

No mean feat since the new dotinfo registry opened only on October 1 and already has more than 350,000 .info domain names registered.

Although that may sound a lot, it's nothing compared with the 20 million dotcom domains snapped up so far - a glut that has led to seven new top-level domain names including .info, .biz and .name being released.

For businesses, the main reason to stake their cyber claims on these new frontiers is not the need to build a web presence or e-commerce strategy but to protect brands - especially if they have a global reach.

The All Blacks are a good example - beaten in their own backyard, but now master of a global domain.

But surely the NZRFU, with a registered trademark for the All Black brand, has the right to allblacks.co.nz? Well, yes, it probably does, but it would have to go to court to find out.

That's because the New Zealand domain registry - unlike the .com, .net and .org registry run by Versign - doesn't yet have a disputes resolution process.

In New Zealand, it's first come first served. In contrast, Versign, through the World Intellectual Property Organisation, follows a process whereby rightful trademark holders can win back their domains.

Wipo also handles disputes for the new top-level domains and for a number of country domains such as Mexico and Fiji. So why not here?

The Internet Society, which is the controlling organisation for the New Zealand registry, is reviewing the issue.

But the society doesn't really have its eye on the ball. Last year, plagued by internal politics, it too had a piece of cyberspace whipped away from under its very nose.

Some New Zealand companies have used Wipo arbitration to win back control of their brands. In April last year, Lion was successful in wresting steinlager.com from a Waikato business which had registered the domain two years before.

The registration process for the new domains such as dotbiz and dotinfo has also been designed to intercept potential trademark conflicts before they happen.

During the sunrise period before new domains are assigned, companies have the opportunity to register their rights to a name claim by showing proof of a trademark.

But while that might get you further up the list, you'll still end up competing with trademark holders of the same name in different countries. When that happens, all legitimate trademark holders are put in hat and the winner picked by a lottery. That can produce some odd results.

Sara Lee Corporation, for example, has won kiwi.info because it has the trademark for Kiwi shoe polish.

It also gets tricky when your brand name is the same as an ordinary word - like sky. It could be argued sky.info might be an appropriate address for a global meteorological or astronomy website, but the domain has been scored by our own Sky Network Televison.

In similar vein, one Jaime M Cerrato had the foresight to trademark the word sex in the United States last year and was successful, winning sex.info.

All of which points to getting a good trademark lawyer to guide you through the domain name maze. Simply, the more you apply the better chance you get when the lottery wheel spins.

That has got me wondering - while we're still in the pre land-rush phase - whether I should be going for chris.barton.name. It does have a certain ring to it. My own chunk of cyberspace where I control my digital identity. Great status symbol too.

Must dash - 500 applications is going to take some time. Maybe I should trademark myself to be sure?

* chris_barton@nzherald.co.nz


Links


ICANN new top-level domains

dot-info

dot-biz

dot-name

Rugby News

All Blacks

A J Park

Domainz

VeriSign

World Intellectual Property Organisation

The Internet Society

Domain Name Disputes Resolution - Trigger Questions

www.isocnz.org