The management of domain names and metatags

within a companyCyprus – Nicosia October, 2003Cyprus – Nicosia October, 2003

Etienne Wéry,Attorney - Brussels and Paris barsSenior Lecturer « Université Paris I

(Sorbonne) »etienne.wery@ulys.nethttp://www.ulys.net

http://www.droit-technologie.org

Table of content

I. Before the registration of the website

II. Registration of a websiteIII. Using a domain nameIV. Enforcement issues

Why is the domain name management so crucial ?

An example: GlaxoSmithKline

I. BEFORE THE REGISTRATION OF A WEBSITE

I-A Creation of a permanent Domain Name Task Force (DNTF)

1) Why and how ?• The « Domain Name Officer » : Member of the

board or in charge of legal matters;

• The task force : CENTRALIZATION : decision,

documentation, billing,… COOPERATION : the DNTF must combine

good geographical representation and good skills representation.

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

• Pay attention to the registration « close domain names » : Against which threats ?

Cybersquatting Reverse domain name hijacking Pointsquatting Typosquatting

• Main advantage: anticipation of problems (cost-cutting).• 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 registered it (typosquatting).

I-C Choosing Metatags (1/3)

1) No registration.2) Fair purposes : cross-references,

comparative commercials, group of companies, …

3) Example : Terry Welles vs Playboy (see next slide)

I-C Choosing Metatags (2/3)

Example: Terry Welles vs. Playboy

I-C Choosing Metatags (3/3)

4) But also unfair purposes: to illegaly increase or divert traffic from a competitor’s website e.g.

Two things to remember1) The DNTF must cooperate with all involved departments to establish a list of usefull metatags.2) Contractual provisions (in case of sponsorship for exemple)

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.

Worldwide companies ex : Coca-Cola

2. Often it is more difficult : Multi-location companies (wich ccTLD and

/ or gTLD ?).

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-efficient analysis)

I-E Verifications prior to registration

1) Which verifications ? WHOIS? Database ccTLD’s particular rules

I-E Verifications prior to registration

2) Why ? Multiplicity of ccTLD’s rules Still possible to amend plans Anonymous, quick and easy (otherwise: risk of

company’s secret divulgation) To 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?

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. (alias)

2) Postal address: the head office or the place where the contact is located.

3) Phone number

II-C The allocation of a 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, 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 got to the new site.)

IV. ENFORCEMENT ISSUES

IV-A Monitoring

1) Necessary if DN are considered as assets2) Often outsourced to a specialized

provider / Law firm3) Metetags 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 (1 panelist).• Application to gTLDs and to certain ccTLDs

IV- Enforcing: legal proceedings (6/6)

III. Legal proceedings’s characteristics:

• Quite often a long run process;• Difficulty to execute ;• 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 compensation.

Questions & Comments

Etienne Wéry,Attorney - Brussels and Paris bars

Senior Lecturer « Université Paris I (Sorbonne) »etienne.wery@ulys.nethttp://www.ulys.net

http://www.droit-technologie.org