A leading intellectual property lawyer says the policy document used by Ireland's Internet naming registry may leave it open to legal challenge in disputes over domain names.
The guidelines on the registry's Web site (at www.ucd.ie/ hostmaster) show which names may or may not be registered. But Niall Rooney, a lawyer with Tomkins & Co - a leading firm of patent and trade mark agents - argues that these are too vague and need updating.
The authority at UCD, which assigns names in Ireland's .ie domain, is known as the IEDR. Rooney cites paragraph 3.4 of the IEDR's policy, which states: "A domain name shall correspond with reasonable closeness to the name of the applicant or to an abbreviation or trade mark by which the applicant is well known."
The terms "reasonable closeness" and "abbreviation or trade mark" need to be clearly defined, he says, along with the question of "well known" to whom. Although an abbreviation or trade mark may not be well known among the general public, it may be well known within a particular trade or business, and should therefore be just as acceptable as a domain name. Where the proposed name is already in use, or appears likely to be claimed by another applicant, the guidelines say another name should be chosen - but they do not specify who makes that decision.
Applicants may have various names, such as their registered company name, business names and many registered or unregistered trade marks relating to their name, products or services. However another section of the guidelines permits registration of only one domain name per applicant.
Dr Niall O'Reilly, administrator of the IEDR, readily admits that legal advice was not sought when the guidelines were drafted. "Like all rules they are open to being contested," he says. The down side of having more detailed rules would be that applications for domain names would take longer to process, so for now the need to register names quickly takes precedence over more thorough checking.
Registered trademarks are protected under the Trade marks Act 1996, and unregistered trade marks can become protected over time by the common law of "passing off" (see Computimes, September 1st). However, Dr O'Reilly says that when the IEDR registers a name "there is no question of searching registries of trade marks".
He feels the applicants, usually Internet service providers (ISPs), should take responsibility for checking that domain names do not infringe trade marks. The IEDR is currently reviewing the rule prohibiting more than one registration per user.
Dr O'Reilly draws a distinction between the operation of the registry and the management of its policy for granting or refusing domain names. In the absence of a body to determine policy, he says, registries have had to write their own policies.
However, an Internet specialist, who preferred not to be named, said that as domain names are a public resource, the IEDR should have a "proper decision-making process" and needs to be more transparent and accountable.
So far only three of the 3,000 names registered in the .ie domain have been disputed, one of which is now before the courts. In Britain, out of 70,000 names, there have been seven disputes. While the number of disputes is low at present, it could grow as more companies go online.
Nominet, the registry for the .uk domain, has already taken legal advice and has drafted a complex policy document and dispute resolution procedure, in an attempt to protect itself. The IEDR is coming under pressure to do likewise, but is resisting until a responsible body is set up to manage policy.
Meanwhile, despite IEDR's rule that only one domain name can be registered per applicant, Internet Ireland has registered at least two: internet-ireland.ie and teo.ie. Both point to its homepage. Using "teo" in a domain name is particularly surprising, since it is an abbreviation for teoranta - the Irish for "limited" - and as such is restricted under the Companies Act.
Barry Breslin, director of Internet Ireland, says teo.ie was registered "before any rules were laid down", and was registered by someone who is no longer with the company. When pressed on whether it would strike the name from the register, he said the name was in use, but he would be "willing to review it".
This isn't the only example of IEDR's rules being compromised. The IEDR has a rule that applicants must have a facility - offices or assets - in Ireland. Yahoo! has registered yahoo.ie, but their people in London confirmed the company had no office in Ireland. Pat Kane of the IEDR said the name was registered during 1996, before the IEDR's current rules came into force, but admitted it "could have been registered in error".
Eoin Licken is at: eoinl@iol.ie