Articles and talks

What's in a name.com?

by Louise Ferguson (2000)

[This article first appeared in Public Finance magazine in September 2000].

Barcelona town hall fought for and won the coveted Barcelona.com web address. Should UK councils follow its lead by claiming their town or city's name in cyberspace? Louise Ferguson reports

Web addresses are big business these days – and the very biggest to date has been `business.com', which sold for $7.5m late last year. For all kinds of companies, the pressure to own the catchiest or most appropriate address is immense. The BBC, for example, despite having a successful web presence using the bbc.co.uk and beeb.com domains, reportedly spent £200,000 of licence-payers' money last year on retrieving the bbc.com address from a US company called Boston Business Computing.

In theory, geographical domains such as london.com or edinburgh.com could fetch similar sums. Tour operators, newspapers and other commercial enterprises have already staked a claim to many, but where does this leave the organisation that actually represents the area – the local council? Surely the dotcom address for their town or city rightfully belongs to them?

Barcelona City Council certainly thought so. Although it set up its official website at www.bcn.es in 1995, it petitioned the World Intellectual Property Organisation (WIPO), one of the organisations handling domain name disputes, in May this year that it should be able to launch another city portal site at Barcelona.com. The only problem was that the site was already owned by barcelona.com Inc, a New York-based web company that had placed its own city portal at the address.

The council's arguments won the day. The WIPO arbitrator argued last month that the city had `better rights' and `more legitimate interests' in Barcelona.com than the current owner. He also said the owners acted in bad faith, as surfers `would normally expect to reach some official body or representative of the city of Barcelona itself' at Barcelona.com. The council had claimed that it had the sole right to provide tourist information about the city on the Internet, a claim the arbitrator did not dispute.

The Barcelona decision is not the only case where a council has won the transfer of an address. In recent lawsuits in Germany, Heidelberg and other city councils have won their `.de' domains. But the country's singular laws led many to believe that these were isolated cases.

In the UK, the value of geographical names was brought to light this spring when villagers in Bannockburn in Scotland found that a UK company, Webhound, had registered more than 15,000 .co.uk domain names for towns and villages. Bannockburn.co.uk (or even .com) is unlikely to fetch vast sums at auction, but villagers were angered by what they saw as an attempt to take away their identity.

Webhound argued that it didn't intend to sell most of the domain names – it merely wanted to provide e-mail and other services for people living in those villages. It now says it will offer free sub-domains and web hosting for not-for-profit organisations and parish councils from October 2000.

A domain name is an address, not a trademark or brand. Each computer connected to the Internet is assigned a unique number, but long strings of numbers are difficult for people to remember, so there's a database mapping all computer numbers to more memorable domain names. As with the numbers, the domain names have to be unique, and some are more memorable and valuable than others. Queen.org, for example, has a ring to it that HerMajestyQueenElizabethII.gov.uk lacks.

The domain name system was developed with no thought given to e-commerce and trademarks. In fact, there are hundreds of trademarks in the world for every domain name. Names in the .com/.org/.net domains were registered on a first-come, first-served basis.

Some countries, including the UK, France and the US, were far-sighted enough to reserve sub-domains for official organisations, such as government and the police. These leave no doubt about the source of information on the site. But in other countries, including Spain, the lack of a systematic approach to allocating domain names for official bodies has led to naming chaos. With nearly 20 million domain names registered around the world and fewer and fewer names available, the number of disputes is increasing.

Someone disputing the ownership of a coveted .com, .net or .org domain name used to have to launch a lawsuit against the domain owner. Then in December last year, the Internet Corporation for Assigned Names and Numbers (Icann), the international body governing the domain system, launched a dispute resolution procedure. This meant that these disputes could be settled quickly and cheaply outside the court system. More than 1,200 complaints have been filed to date with the four arbitration bodies under the Uniform Dispute Resolution Policy (UDRP) procedure.

The UDRP is mandatory for anyone who buys a .com, .net or .org domain name, unlike the equivalent UK dispute resolution system for .uk domains, run by Nominet, which is voluntary for both parties.

A complainant has to show three things – that they have an interest in a trademark (whether registered or common law) that is the same as or similar to the domain name; that the domain owner doesn't have a right or legitimate interest in the domain; and that there has been bad faith in the way the domain was registered or used. This may seem a daunting requirement. In fact, domains have been transferred in more than 70% of cases.

If the Barcelona.com decision were to be treated as a precedent by other arbitrators, then the world's biggest on-line retailer, Amazon.com, might see its domain name fall into the hands of the regional Amazon government, which might be argued to have `better rights'. The US city of Boston could `repossess' Boston.com from the Boston Globe newspaper, although Boston in Lincolnshire might have something to say about that. The Irish government might remove Ireland.com from The Irish Times, and the Amsterdam authorities could take charge of Amsterdam.com, which is owned by an escort agency.

In the UK, domains such as London.com, Edinburgh.com, Torquay.com and Brighton.com are all in the hands of private business. Torquay.com is a privately-run directory service for the town, while Edinburgh.com is owned by a teddy-bear kit manufacturer. London.com is owned by Mail.com, a US vanity e-mail company.

But arbitration is proving something of a lottery, with erratic decisions and conflicting judgments. In one city-com case decided recently, the arbitrator ruled that the district of Huangshan in China did not have the right to seize the domain Huangshan.com from the Hong Kong company that registered it first.

Similarly, Manchester Airport failed to secure the transfer of ManchesterAirport.com last month, which remains with a Manchester company called Club Club. More recently, the official organisation of the community of St Moritz, Switzerland, did not secure StMoritz.com, despite the domain owners failing even to file a response to the complaint.

Recent developments at the WIPO may change all this. At the request of 19 governments, the organisation is considering extending the dispute policy to include geographical names. Local councils would then stand a good chance of achieving domain transfers. In France and Germany, local authorities often hold trademarks in their city's name. But even in those countries where geographical names cannot be trademarked, such as the UK, local authorities could probably successfully argue that they hold a common law trademark.

Such a change to the policy would cause chaos on the Internet. There are more than 2,000 domains that include the word London, for example. Were all local authorities to prove as litigious as Barcelona, many domains could be plunged into legal uncertainty.

At $750–$1,500 for a single-domain, single-arbitrator case, the procedure for winning an address seems cheap. However, both parties are free to go to court should the decision go against them and, as most names have been registered by US registrars, many cases go to courts there, where legal bills can rise to hundreds of thousands of dollars. Nor is there anything to stop a losing domain owner, or anyone else, starting a complaint procedure of its own against the winner. This should lead some to question whether pursuit of domain names is a correct use of taxpayers' money.

Most UK councils show no sign of following Barcelona's lead. Both Edinburgh City Council and the Greater London Authority say they have no plans to obtain their respective dot.com domains. `We have London.gov.uk,' says a spokesman for the GLA, `and we really think any other domain would not be appropriate. Perhaps the London Tourist Board would be interested.'

There is also an argument that pursuing domains could backfire on councils. Thomas Rask, president of Rask Inc, which has a substantial stake in several domain names including Stockholm.com, is angry about the WIPO decision and says he has already written to the mayor of Barcelona to register his displeasure. He argues that the complaint will `be bad PR for the city'. Rask advises the mayor to give up the fight `before Internet users all over the world come to have an extremely negative view of Barcelona and all things Spanish'.

Internet entrepreneur David Castello, of Castello City Networks, agrees. `Decisions such as this only serve to create a new form of abuse. This kind of logic can label any legitimate business as a cybersquatter and encourage reverse domain-name hijacking – which is what the domain owners correctly accused the City of Barcelona of doing.'

In the end, a catchy web address will only be valuable for a council that has good content on its site. Given the quality of most UK councils' existing `gov.uk' sites, money spent pursuing other domains would probably be wasted. Similarly, if Barcelona plans to pack its coveted address with statements from the mayor, council press releases and the rest of the sleep-inducing material on its current site, it will have spent taxpayers' money in vain.

And its newly acquired domain may prove to be very expensive indeed. Barcelona.com Inc has now filed a lawsuit against Barcelona City Council in the US courts and the council's lawyers say they will `appeal the appeal' if necessary. It could be a long and costly battle, with no guarantee that dot.coms as we know them will even exist when the case is finally decided.

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