Transcript Document

Corporate
Domain Names
Management
Dublin, May 2, 2003
Etienne Wéry,
Attorney - Brussels and Paris bars
Teacher at « Université Paris I (Sorbonne) »
[email protected]
http://www.ulys.net
http://www.droit-technologie.org
PLAN
I.
II.
III.
IV.
Before the registration of the website
Registration of a website
Using a domain name
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)
Outsourcing issues?
2)
•
•
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)
2)
3)
No registration.
Legal purposes: cross-references, comparative
commercials,…
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)
5)
6)
But also illegal purposes: illegaly increase or divert
traffic from a competitor’s website e.g.
The DNTF must cooperate with all involved
departments to establish a list of usefull metatags.
Contractual provisions in case of sponsorship.
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.
Often it is more difficult:
2.

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
Verify what?
1)


WHOIS? Database
ccTLD’s particular rules
I-E Verifications prior to registration
Why this prior verification?
2)




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)
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?
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)
2)
3)
E-mail address: generic and continually monitored
and operated. Il allows also info dispaching.
Postal address: the head office or the place where
the contact is located.
Phone number
II-C The allocation of 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
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)
2)
3)
Necessary if DN are considered as assets
Often outsourced to a specialized provider
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 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 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 competitionrelated 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]
http://www.ulys.net
http://www.droit-technologie.org