August 2001
.CPA.pro: New Web Destination
By Janell M. Kurtz, Thomas Zupanc, and Wayne R. Wells
The Internet, with approximately 200 million users worldwide, is an economical and effective way for CPAs to advertise and promote their services. The challenge lies in making a professional website that is easy to find and attractive to new users. Internet users looking for information often try to find a business’s website from its trade name. For example, a user may simply type “www.andersen.com,” assuming (in this case correctly) that this will be the website for the Andersen accounting firm.
In the near future, however, an “Internet area code” specifically designated for CPAs, “.cpa.pro,” will be available. The .cpa.pro name will augment the web presence of CPAs with a .com address and open up addresses unavailable as a .com. Internet users will be able to simply type a firm or professional’s name (www.smith.cpa.pro) and have a better chance of finding what they’re looking for.
Background
The Internet’s domain name system is coordinated and managed by the Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit, private-sector corporation formed by a broad coalition of business, technical, academic, and user communities. In the fall of 2000, ICANN selected seven new top-level domains (TLD):
ICANN is currently negotiating agreements with the registry operators and sponsoring organizations for the implementation of these TLDs; although the negotiations have taken longer than anticipated, the new .cpa.pro name is expected to be available in the third quarter of 2001. RegistryPro, Ltd., is the registry operator that will administer the .pro TLD. In addition to .cpa.pro, .med.pro will be available for doctors and .law.pro for attorneys. After the initial launch, RegistryPro plans to add other professional designations, including architects and engineers. The current status of the negotiations can be found at www.icann.org.
Advantages
The new .cpa.pro registry will enable CPAs to separate themselves from the dot-coms. With a .com address, CPAs and their firms are lumped with a myriad of other sites with which they have little in common. The .pro addresses eliminate the anonymity that has accrued to the .com address.
There are numerous instances where the more general .com address is unavailable to an accountant. For example, the Minneapolis accounting firm of Thomas Lewis & Associates, P.A., cannot register “thomaslewis.com,” because it is registered to Thomas Lewis, a medical doctor in San Francisco.
The .cpa.pro TLD will also allow CPAs to distinguish themselves from individuals that provide similar services but are not CPAs. The global reach of the Internet makes establishing professional qualifications cumbersome, but RegistryPro is working with professional associations around the world to establish appropriate guidelines. Although the registration restrictions for .cpa.pro have not been finalized, it appears that certification will most likely be required for U.S. accountants.
Legal Rights to Domain Names
CPAs that currently have a .com site, and those without a website, should consider a .cpa.pro name. As with any TLD, only one person can own a particular name, and, in most cases, the first CPA to register the name will be the rightful owner. Consequently, a CPA who waits to determine the success of the .cpa.pro name may find it more difficult to secure a desired name.
Cybersquatting. In limited situations, the Anticybersquatting Consumer Protection Act (ACPA) will protect trademark owners from having their trademarks registered by another as a domain name. Cybersquatting, the bad faith registration of a trademark as a domain name, is not expected to be a concern with .cpa.pro names. The professional registration restrictions should eliminate most potential cybersquatters. In the event of cybersquatting, a lawsuit could be brought under the ACPA, or arbitration pursuant to ICANN’s uniform domain name resolution dispute policy (UDRP). Successful suits have required a demonstration of bad faith, such as: an offer to sell the domain name following on the heels of registration; a pattern of registering trademarked names; fictitious entities created to register trademark names; or dubious explanations for the selection of the domain names.
Not all domain name disputes stem from bad faith and not all will be resolved by the ACPA and ICANN. The arbitration decision involving Penguin.org illustrates this (Penguin Books Limited v. The Katz Family and Anthony Katz, WIPO Case No. D2000-0847): Anthony Katz, whose long-time nickname was Penguin, registered the domain name Penguin.org. Penguin Books Limited also sought the domain name. In deciding the dispute, the arbitration panel found in favor of Katz on the basis that he had a legitimate interest in the name Penguin and had not acted in bad faith.
There are numerous instances where more than one party can legitimately claim trademark rights to a name. The Minneapolis firm of Thomas Lewis & Associates, P.A., uses the acronym TLA in its marketing. This acronym is also used by Washington-based Temple Lewis Anderson & Co., P.S., Certified Public Accountants. Outside of the Internet, these firms can both use TLA, but there can be only one “tla.cpa.pro” domain name. The first firm to register the name will most likely be entitled to it; only in rare cases would the laws of dilution and infringement offer a remedy.
Dilution. The Federal Trademark Dilution Act protects famous marks from dilution. Under the law, owners of famous marks—well-known trademarks—can stop the use of the same or similar marks when such use dilutes the famous mark. Dilution is generally based upon either blurring or tarnishing the mark: Blurring occurs when the uniqueness of the famous mark is diminished, whereas tarnishing occurs when the goodwill and reputation of the famous mark are damaged. Although PricewaterhouseCoopers and Ernst & Young might qualify as famous marks, the names of most accounting firms will not.
Even famous names are not guaranteed protection under antidilution law. The First Circuit Court of Appeals recently affirmed a decision rejecting an absolute rule that using famous marks as domain names constitutes dilution. In Hasbro, Inc. v. Clue Computing, Inc., the trial court determined that the domain name Clue.com used by a computer consulting business did not dilute Hasbro’s registered trademark for the murder mystery game Clue [Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp.2d 117 (D. Mass. 1999), aff’d, 232 F.3d 1 (1st Cir. 2000)]. The court found no actual tarnishment and decided that blurring requires consumers to at least potentially associate the two products with the same mark.
Infringement. The law of trademark infringement prohibits the unauthorized use of a trademark on goods or services when the use would likely confuse consumers as to the origin of those goods and services. The evidence must show a likelihood that an appreciable number of ordinary, prudent purchasers are likely to be confused as to the source, sponsorship, affiliation, or connection of the goods or services. Under certain circumstances, this may offer a remedy for domain name disputes.
The ACPA, antidilution, and trademark infringement laws will be applicable only in a limited number of domain name controversies. The general rule will remain first come, first served. CPAs should therefore consider registering their names as .cpa.pro domain names, even if they do not have immediate plans to use the name.
Registration
As of this writing, negotiations between ICANN and RegistryPro are still under way, so .cpa.pro domain names cannot be registered. The Federal Trade Commission has issued a consumer alert, cautioning consumers against domain name preregistration services that guarantee a particular name or preferential treatment. Furthermore, RegistryPro has stated that it will not recognize preemptive registrations offered by another registrar. RegistryPro, however, is a joint venture between Register.com, Inc., and Virtual Internet, Plc., and Register.com is accepting requests for .pro domain names but makes it clear that a name request does not guarantee that the name will be registered. CPAs should monitor www.icann.org and www.registrypro.com for the latest developments on .cpa.pro. Actual registration is not expected until the third quarter of 2001, at the earliest.
In advance of .cpa.pro general registrations, it is anticipated that there will be a sunrise registration period aimed at protecting the intellectual property rights of accounting firms. During the sunrise period, owners of marks that have been registered in a national trademark office for as least one year will be able to register their marks as .cpa.pro names on a first-come, first-served basis.
After the sunrise period, registration for a .cpa.pro domain name will be available to individuals and firms on a first-come, first-served basis. Registrants will be allowed to register multiple domain names. For example, the firm of Kern, DeWenter, Viere, Ltd., might not only register kdv.cpa.pro, but also kerndewenterviere.cpa.pro, or kern.cpa.pro. It appears that generic names will be available, so a firm may find great value in names such as audit.cpa.pro or taxes.cpa.pro. To ensure that registrants of .cpa.pro domain names are in good standing within the profession, registration will be for a two-year term with unlimited renewals.
Editors:
Paul D. Warner, PhD, CPA
Hofstra University
L. Murphy Smith, DBA, CPA
Texas A&M University
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