Transcript Document

The management of
domain names and metatags
within a company
Cyprus – Nicosia October, 2003
Etienne Wéry,
Attorney - Brussels and Paris bars
Senior Lecturer « Université Paris I (Sorbonne) »
[email protected]
http://www.ulys.net
http://www.droit-technologie.org
Table of content
I.
II.
III.
IV.
Before the registration of the website
Registration of a website
Using a domain name
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)
Outsourcing issues?
2)
•
•
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)
2)
3)
No registration.
Fair purposes : cross-references, comparative
commercials, group of companies, …
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 remember
1) 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)
Sometimes the situation is simple :
1.


One company commercialy active in one country:
registration of the relevant ccTLD.
Worldwide companies
ex : Coca-Cola
Often it is more difficult :
2.

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
Which verifications ?
1)


WHOIS? Database
ccTLD’s particular rules
I-E Verifications prior to registration
Why ?
2)




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)
2)
3)
Registrant : the company (not employee, ISP
or even CEO);
Administrative contact : operational power;
qualified employee;
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)
2)
3)
E-mail address : generic and continually monitored
and operated. (alias)
Postal address: the head office or the place where
the contact is located.
Phone number
II-C The allocation of a DN
1)
2)
gTLDSs (.com, .org, .net,…): normally « first come,
first serve ».
By exception: particular conditions (Ex: <.museum>,
<.aero>.
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)
2)
3)
Necessary if DN are considered as assets
Often outsourced to a specialized provider / Law firm
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 DisputeResolution 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) »
[email protected]
http://www.ulys.net
http://www.droit-technologie.org