"The WLS is a proposed registry-level service under which a user may "back-order" a domain name which they believe may expire in the future. Under the WLS, an expiring domain name will be allocated to the owner of the WLS subscription, if any, for that name. The idea for the WLS grew out of the observation that various individuals and businesses over the years have developed systems for determining that a domain name is due to expire, and then re-registering the domain name when it is deleted from the registry. The interest in expiring domain names arises from three primary motives. First, there is inherent value in short, descriptive, or generic words as domain names in .com. For example, since all three-letter combinations are taken, the only way to get one is to snag it when a present registrant does not renew it. Second, when a business goes belly-up, there is value in the residual traffic which the domain name might still attract. This motivation is similar to turn-over in commercial leases in shopping malls or strip shopping centers. Third, there are those who, for whatever reason, would like to obtain a particular domain name in the event the present registrant does not renew, and they patiently wait for the expiration date to pass. Many people in that third category are stunned to find that the domain name they have been coveting is almost instantaneously registered through services such as SnapNames, NameWinner, and other services which cater to those seeking expired domain names for the first two reasons. Those people will, in the future, be equally stunned to find out that the "fair" WLS system they have been advocating, will in fact turn out to have simply moved the expiring domain game back one step, and that those who were good at being "first" in the first-come, first-served allocation of domain names, will be equally adept at being "first" to get to WLS subscriptions on desirable domain names.|
The WLS debate is populated by several camps. On the one side is an alliance between SnapNames and Verisign, who would like to offer the one and only domain re-allocation service, and perhaps have a service re-selling program among registrars. They are joined by certain intellectual property folks, who fail to understand that they will do no better at beating the WLS game than the present re-allocation game. On the other side is a collection of registrars who offer various re-registration services, and who stand to lose out entirely against a registry-level re-allocation service. Among these registrars, one hears the distant footsteps of lawyers on the march, making vaguely threatening sounds at ICANN, if the WLS is approved.
In public, at least, neither of these camps has addressed the impact that two pending US patent applications will have on the business of re-registering expiring domain names. These two applications are:
Registry-Integrated Internet Domain Name Acquisition System
U.S. Pat. Appln. No. 10/016498
Filed November 1, 2001
Inventor: Len Bayles
Domain Name Acquisition and Management System and Method
U.S. Pat. Appln. No. 10/016497
Filed November 1, 2001
Inventors: Raymond King, Ron Weiner, Len Bayles
It is important to understand what these documents are, and what they are not. A few years ago, the U.S. Patent Office began publishing the contents of pending patent applications at 18 months from their filing date. These are published applications. They are not issued patents. During pendency of these applications, the claims might be rejected or amended. So there is no guarantee that they will issue as patents. However, if there was no publication or public use of the claimed systems prior to November 1, 2000; or if there was no prior use or sale of such systems by anyone else prior to the time that these inventors made their invention; then there is little reason to believe that the applications would issue in a substantially altered form. Another thing one cannot know from the published applications is the identity of the owner or assignee of the application. However, one can take an educated guess, based on the identities of the inventors and the law firm responsible for the applications.
The '498 application is directed to a system which appears to be the registry-level WLS system as proposed. A representative claim, or statement of the invention sought to be protected, is as follows:
6. A method for acquiring a deleting domain name, the method comprising the steps of:
receiving from a registrar a request to acquire a desired domain name;
receiving from a registry a pending delete notification for the desired domain name, the pending delete notification preceding a public delete notification; and
requesting acquisition of the desired domain name for the registrar.
The '497 application is much more interesting, since it is directed to the methods that are currently in use by various registrars to acquire domain names. A representative claim from the '497 patent is as follows:
33. A method for domain name management comprising:
a step for identifying a domain name with a first registration;
a step for identifying an interested party desiring a succeeding registration for the domain name;
a step for monitoring a status of the first registration; and
a step for effecting the succeeding registration when the status of the first registration indicates that the domain name is registrable.
Claim 33 is by no means the only independent claim of the application, but it is perhaps the most readable one for those unfamiliar with the peculiar syntax of patent claims. Basically what it says is, "If you run a system that monitors and re-registers domain names for people who have signed up to re-register a domain name, then we will shut you down and take our pick of (a) your profits or (b) our lost profits. And if we can show you were aware of this patent, then you can multiply (a) or (b) by three, and add attorney's fees and costs."
Those who, in the future, may wish to avoid liability for willful infringement are advised to discontinue reading ICANNwatch.
So, what does all this mean? The first thing the registrar camp should understand is this - if they intend to expend time, effort, and money into fighting ICANN approval and the launch of WLS, then they will be shown to have wasted their resources if the '497 application issues as a patent. Enforcement of such a patent will put them out of the re-registration business just as surely as approval of the WLS. The '497 application includes other claims relating to conducting an auction for expiring names which, if the folks at Stoel Rives are awake, require very little tweaking to read precisely on the NameWinner model. The second thing the registrar camp should understand is that there were indeed folks who were interested in re-registering expiring domain names circa November 2000. Many of these folks were connected, in one way or another, to Len Bayles. While the various techniques in use at that time may have been kept as trade secrets, there is little doubt that the presence and use of these techniques was no secret at the registry, which certainly had noticed the increased request traffic at specific times in the domain deletion cycle. It would be in the registrars' interest to nail down the history of domain re-registration while memories are fresher than they will be in the future.
For those of us in the cheap seats at the ICANN parade, an amusing possibility would be for ICANN to authorize someone other than the patent owner or licensee to implement the WLS. While other varieties of standards organizations or technical coordination organizations have contractual policies to counteract the tendency of some players to attempt to obtain and enforce patents relating to the relevant technical standards or coordination effort, ICANN does not. So, if one is in a position to affect ICANN policy, then one is also in a position to attempt to steer ICANN policy toward the endorsement of systems for which one is also seeking a patent position. This principle applies in spades to things like ENUM and other areas in which ICANN may endorse standards.
Ultimately, whether ICANN approves WLS is irrelevant. If it is approved, then the '498 application would ensure that only one entity, and not ICANN, will control which U.S. registries will be permitted to implement a WLS. If it is not approved, then the '497 application would ensure that only one entity will control which U.S. registrars will be permitted to run systems which monitor domain name registration status and then seek to re-register expired domain names on behalf of their customers.
The only remaining question would be the extent, if any, to which a U.S. patent based on the '497 application would confer the ability to control access to non-U.S. registrar sites by customers in the U.S. seeking to use a domain re-registration service. U.S. patents are limited to enjoining activities conducted in the U.S., the importation of articles manufactured by a process patented in the U.S., or the exportation of components of articles that would otherwise be infringing if assembled in the U.S. However, there is no case law, yet, on the subject of performing patented computer-implemented processes outside of the U.S. in a manner which is accessible in the U.S. via the internet. Rather than to attempt to predict the outcome of that legal question, a bit more creative claim drafting might be required to cover the process from a somewhat different perspective."