dublin, may 2, 2003 corporate domain names management dublin, may 2, 2003 etienne wéry, attorney -...
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CorporateDomain Names
ManagementDublin, May 2, 2003Dublin, May 2, 2003
Etienne Wéry,Attorney - Brussels and Paris bars
Teacher at « Université Paris I (Sorbonne) »[email protected]://www.ulys.net
http://www.droit-technologie.org
PLAN
I. Before the registration of the websiteII. Registration of a websiteIII. Using a domain nameIV. Enforcement issues
Why is the corporate domain name management so crucial for businesses?
An example: GlaxoSmithKline
I. BEFORE THE REGISTRATION OF A WEBSITE
I-A Creation of a permanent Domain Name Task Force (DNTF)
1) How to proceed?• A « Domain Name Officer »: Member of the
board or in charge of legal matters (the more a company is big, the more a DNTF is necessary);
• 2 Principles: CENTRALIZATION: decision,
documentation, billing,… COOPERATION: the DNTF combines good
geographical reprezentation and good skills reprezentation.
I-A Creation of a permanent Domain Name Task Force (DNTF)
2) Outsourcing issues?• Specialized companies• Various services: registration, follow up ,
monitoring,…
Ex: Men & Mice (see next slide)
I-B Choosing a domain name
5 points:
• Find your DN first and choose the project name after !• The registration of « close domain names »: Against which treats?
Cybersquatting Reverse domain name hijacking Pointsquatting Typosquatting
• Main advantage: anticipation of problems.• Political choice (cost efficiency).• Limit: The zero-risk situation, does not exist.
Examples (1/2)
Microsoft has the DN <microsoft.com> and also <micro-soft.com>
Examples (2/2)
BUT Microsoft has not the DN <microsotf.com> (microsoTF.com) and someone else registred it (typosquatting).
I-C Chosing Metatags (1/3)
1) No registration.2) Legal purposes: cross-references,
comparative commercials,…3) Example: Terry Welles vs Playboy (see next
slide)
I-C Chosing Metatags (2/3)
Example: Terry Welles vs. Playboy
I-C Chosing Metatags (3/3)
4) But also illegal purposes: illegaly increase or divert traffic from a competitor’s website e.g.
5) The DNTF must cooperate with all involved departments to establish a list of usefull metatags.
6) Contractual provisions in case of sponsorship.
I-D Opting for a gTLD or ccTLD (1/2)
1. Sometimes the situation is simple: One company commercialy active in one
country: registration of the relevant ccTLD.
2. Often it is more difficult: Case of worldwide companies
EX: Coca-Cola Case of multi-location companies (wich ccTLD
are to be registered?).
I-D Opting for a gTLD or ccTLD (2/2)
Solution: combination between 2 approaches:
• The protection point of view (ex: registration as DN of all brands)• The target point of view (cost efficiency analysis)
I-E Verifications prior to registration
1) Verify what? WHOIS? Database ccTLD’s particular rules
I-E Verifications prior to registration
2) Why this prior verification? Multiplicity of ccTLD’s rules Still possible to amend plans Anonymous, quick and easy (otherwise: risk of
company’s secret divulgation) Avoid bad publicity
II. THE REGISTRATION OF A WEBSITE
II-A Information to be provided
1) Registrant: the company (not employee, ISP or even CEO);
2) Administrative contact: operational power; qualified employee;
3) Technical contact: ideally the ISP who has the responsibility of administrating the DN servers
II-B How to provide information?
Beware: Information provided must be constant and everlasting, independently from the physical person and from the provider.
It must be also updated if need so.
1) E-mail address: generic and continually monitored and operated. Il allows also info dispaching.
2) Postal address: the head office or the place where the contact is located.
3) Phone number
II-C The allocation of DN
1) gTLDSs (.com, .org, .net,…): normally « first come, first serve ».By exception: particular conditions (Ex: <.museum>, <.aero>.
2) ccTLDs: sometimes « first come, first serve » BUT OFTEN strict registration policy.
II-D Metatags
The use of METATAGS
No registration procedure Possibility of infringement to IP rights,
trademark owner’s rights, fair competition rules,…
III. USING A DOMAIN NAME
3 main possibilities (1/2)
1) Defensive registration: register a DN without using it.
3 main possibilities (2/2)
2) Waiting page : ex: « under construction »
3) Redirection: frequent utilization of a « close DN »(This site has moved to a new location. Please update your bookmarks Your browser should automatically take you there in 10
seconds. If it doesn't, please go to the new site.)
IV. ENFORCEMENT ISSUE
IV-A Monitoring
1) Necessary if DN are considered as assets2) Often outsourced to a specialized
provider3) Metetag should as well be monitored
IV-B Enforcing: Out-of-Court Settlements (1/6)
I. Out-of-Court Settlements:
• Of course, the parties can settle out-of-court agreement.
• Despite the fact that the price is frequently high, it is very often less than the cost of a judiciary procedure and is quicker
IV-B Enforcing: ADR (2/6)
II. Alternative Dispute Resolution: the UDRP.
• Definition: Uniform Domain Name Dispute-Resolution Policy.
• Organization: collaboration between ICANN and WIPO.
IV-B Enforcing: ADR (3/6)
The complainant must demonstrate 3 elements:• The domain name is identical or confusingly similar to a trademark or a service mark on which the complainant has rights; • The registrant has no rights or legitimate interests in respect of the domain name in question;• The domain name has been registered and/or it is being used in bad faith.
How to demonstrate the « bad faith »?
IV-B Enforcing: ADR (4/6)
Bad faith’s spark of evidence:• Circumstances indicating that the Domain Name was registered or acquired primarily for the purpose of selling, renting or transferring it to the Plaintiff (complainant);•The domain name was registered in order to prevent the owner from reflecting the mark, provided that the registrant has engaged in a pattern of such conduct;•The domain name was registered primarily for the purpose of disrupting the business of a competitor;•The domain name was registered with the intention to gain Internet users by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's site or of a product or service. It must be underlined that the possibility of confusion, especially for the consumer is the central criterion.
IV-B Enforcing: ADR (5/6)
UDRP’s characteristics:
• Effectiveness of the decision;• Possibility to recover the DN even if the cybersquatter cannot be found;• The cost vary between US$ 1.500 and US$ 2.200 for a conflict involving 1 to 10 domain names and requiring 1 panelist.• Application to gTLDs and to certain ccTLDs
IV- Enforcing: legal proceedings (6/6)
III. Legal proceedings’s characteristics:
• Long-run process;• Difficulties for decision execution;• More advantageous if the plaintiff comes from the same country as the defendant OR if it is competition-related OR if the goal is to get money.
Questions & Comments
Etienne Wéry,Attorney - Brussels and Paris bars
Teacher at « Université Paris I (Sorbonne) »[email protected]://www.ulys.net
http://www.droit-technologie.org