What ICANN do for you: Understanding domain names 

As consumer facing and service oriented industries increasingly shift online, maintaining a dedicated website has become indispensable. Yet designing, launching, and operating a website can be a demanding task, further compounded by the challenge of securing a suitable domain name. By way of example, when the business using the domain name ‘Cars.com’ was sold in 2014, that domain name alone was treated as an intangible asset valued at approximately USD 872 million.¹

Despite the substantial value domain names may command, many businesses overlook a key aspect: a domain name does not confer ownership. Rather, it is a licensed right granted by a domain registrar to use the domain name for a fixed term, subject to renewal. This licensing framework is enabled through the Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit organisation responsible for administering the Internet’s domain name system and IP addresses.

In this article, we discuss the nature of domain names, what exactly is the role of ICANN in its administration and outline practical measures for protecting and maintaining your domain name.

The early internet

The precursor to the internet was ARPANET (Advanced Research Projects Agency Network), established in the late 1960s and early 1970s by the United States Department of Defense. ARPANET introduced the use of packet switching to link geographically dispersed computers, forming the backbone of what would become the internet.

Every computer on that network had a unique numerical identifier, known today as an IP (Internet Protocol) address, which users had to type in to connect to a computer. As that network evolved into the modern internet, typing out strings of numbers grew impractical. To solve this, the concept of domain names was born: instead of remembering IP addresses, users could enter a name such as ‘example.com’ to reach a website.

These days, when you enter a domain name into your browser, that name is translated into an IP address through the Domain Name System (DNS). The DNS is essentially a vast distributed directory stored across multiple servers worldwide, structured like a branching tree. The DNS ‘root’ knows which servers hold accurate records for each top-level domain, ultimately directing every query to the right place.

Before 1998, domain names were assigned and managed by Jon Pastel, a key figure in the early development of the internet. As demand surged, it became clear a single individual could not handle the global scale of assigning and managing domain names. In response, the US Department of Commerce established ICANN in 1998. Although it initially operated under US government oversight, ICANN became a global, multi-stakeholder non-profit organisation in 2016.

Today, ICANN plays a largely supervisory role rather than dealing with individual domain names directly. Its functions include technical support of DNS root servers, formulation of policies for domain names, administration of dispute resolution procedures, and coordination of other essential DNS services.

Registration

When registering a domain name, you will not have contact with ICANN directly. Instead, you work through an ICANN-accredited registrar. Registrars, in turn, have contracts with multiple registries which are approved and governed by policies made by ICANN. Registrars and registries may have different rules and pricing that apply to a specific domain name, but they all work together and are advised by ICANN.

Registering a domain name amounts to signing a licencing contract with your chosen registrar. This means you have certain obligations and are bound by terms and conditions to the registrar, the relevant registry, and any other policies (national or otherwise) which surround the contract. Moreover, you do not own the domain name, you are merely acquiring the right to use the domain name, typically for one year, subject to renewal. If you fail to renew, another party may immediately step in to register the domain name. Google famously faced this situation in 2016 when its ‘google.com’ domain name briefly lapsed, allowing it to be re-registered by a third party for just USD 12. Although Google quickly rectified the issue for USD 6006.13 (numerically spelling ‘google’), the incident shows the important of remaining vigilant to domain name renewal dates and reminders.

But why do you even need a domain name?

A domain name acts as a user-friendly pointer to an IP address where your website is hosted. Think of a domain name as an easy-to-remember ‘portal’ rather than a static address, it can persist even if the underlying IP address changes due to hosting upgrades or server migrations. By providing consistency and memorable branding, a domain name makes it simpler for customers to find your business online.

An appropriate domain name should align with your brand, be concise and easily spelled, and avoid confusing similarity with other businesses. Memorable domain names like ‘voice.com’ (sold for USD 30 million), or even ‘fb.com’ (acquired by Facebook for USD 8.5 million) demonstrate the commercial value that a strong domain name can bring to a brand.

Choosing your Top Level Domain

The extension of a domain name (eg ‘.com’) is called a Top Level Domain (TLD). TLDs fall broadly into two categories:

• Country Code TLDs (ccTLDs): such as ‘.au’ (Australia), ‘.uk’ (United Kingdom), or ‘.ca’ (Canada).
• Generic TLDs (gTLDs): traditionally ‘.com’, ‘.org’, ‘.edu’, but now expanded to include more diverse options like ‘.bmw’, ‘.yoga’, or even TLDs in non-Latin scripts.

In Australia, businesses often prefer a ‘.au’ ccTLD (eg ‘.com.au’) to signal their local presence. The rules and regulations for ccTLDs are typically set by the relevant national authority; for Australia, .au Domain Administration (.auDA) manages the ‘.au’ ccTLD. For a ‘.com.au’ domain name, for instance, you usually need an Australian Company Number (ACN) or an Australian Business Number (ABN).

What if the domain name you want is already taken?

Besides trying to purchase a specific domain name for a large sum from a Registrant, there are ways you can dispute the use of a domain name. Provided your brand name is registered as a trade mark, the dispute process should be quite straightforward.

As we have written previously, dispute resolution processes exist:

• on a national level through the Australian domain name dispute resolution policy (AUDRP); and
• internationally through the Uniform Domain Name Dispute Resolution Policy (UDPR), adopted by ICANN,

which bind all registries and registrars accredited through ICANN.

All ICANN-accredited registrars and registries are bound by the UDRP. This means that, following a favourable arbitration or court decision (for instance, a ruling that another party’s domain name infringes your trade mark), ICANN has the power to ‘cancel, transfer or otherwise make changes to domain name registrations.‘ In Australia, .auDA has similar authority over infringing ‘.au’ domain names.

However, ICANN or .auDA generally acts only after a valid legal or arbitral determination. The reverse is also true, if you register a domain name that infringes someone else’s rights, it can be similarly cancelled or transferred away from you. A recent Australian court ruling found that use of the mark ‘tboss’ infringed Hugo Boss’s ‘boss’ mark, resulting in the cancellation of several business names, including the domain name ‘tboss.com.au’.²

Protecting your domain name

Given that a domain name is a critical component of a business’ brand identity but remains subject to a licensing arrangement, careful management is essential. Some practical steps include:

1. Conducting pre-registration checks to ensure you are not infringing on someone else’s existing trade mark. If someone is infringing on your trade mark rights, promptly initiate the appropriate dispute resolution process.
2. Secure registration for any trade marks connected to your brand, including your domain name(s).
3. Make sure you register your domain name with accredited registrars only (a list of ICANN accredited registrars is available here).
4. Know your contractual obligations with the registrar and any associated registries and comply with them. Violating terms and conditions set on your domain name (such as inappropriate content on your website, or poor data handling practices) can lead to the loss of your domain name.
5. Keep your licensing current, paying close attention to renewal reminders and deadlines. Also, make sure that the registration details of your domain name are kept current. In particular, the associated email should be one you can easily access. For a bigger company, this means a generic company email, and not an individual’s email.

Next steps

Domain names can often be a customer’s first look into a business’s online presence and identity, possessing significant monetary and brand value. However, they remain a licensed asset, that does not confer ownership, governed by a complex network of contracts, policies, and dispute resolution mechanisms. To mitigate potential risks, conduct pre-registration checks, maintain all necessary registrations and renewals, and consider trade mark protection where appropriate.

If you require assistance registering or safeguarding your domain name, trade mark or brand identity, contact our intellectual property law team for advice.

This article was written by Luke Dale, Partner, Christopher Power, Solicitor and Alina Tairli, Law Clerk.

¹ ‘The top 25 most expensive domain names’, GoDaddy Blog (Web Page) <https://www.godaddy.com/resources/skills/the-top-20-most-expensive-domain-names>.

² Hugo Boss AG v Hardge [2024] FCA 1325.