Managing Domain Names
Domain name registration and maintenance is an area of law that has grown very quickly- perhaps too quickly for owners of domain name registrations to really think through domain name management. All too often, companies have little or no cohesive strategy for domain name ownership, management or renewal.
A domain name management strategy is essential. A company should know who its domain name registrar is, by whom and how its domain names are being renewed, where they point, and indeed in whose name they have been registered. It is particularly important when a company acquires assets, perhaps through a merger or acquisition, to ensure the relevant domain name is transferred at the same time. Also, many licensees will argue that because the domain name has been registered for use in their country, that they should own it. Generally speaking, there is nothing to prevent the trademark owner from owning (being the ‘registrant’ of) the domain name, which can then be pointed to whichever website is deemed best. This avoids expensive litigation if the licensee does not want to give up the domain name on termination of the licence.
It is also worth considering implementing a domain name watch, for example, on a monthly basis. This can prove invaluable to understanding who else is out there and possibly active with the same or similar domain names. It also enables you to start speedy proceedings to recover domain names that have been registered in contravention of pre-established rights.
There are a number of questions to consider when developing a domain name management strategy:
- why is the domain wanted?
- what is it actually used for?
- Is it necessary?
- Consider here whether it is necessary to have local “country code Top Level Domains” (ccTLDs) as well as “generic Top Level Domains (gTLDs such as .com).
- Is it more relevant for the domain name to be based on a relevant trademark or a descriptive element?
- Consider here what is to be achieved; is a brand being developed or a generic product offered for sale. Also, although proceedings may be brought in respect of a competing domain name that copies an established trade mark, this may not be possible in respect of one that is based on a descriptive or generic term.
- How many domain names are actually owned, what are they and in whose name they are registered?
- Consider how many people are allowed to register domain names or is it the tasked responsibility of one person, and what policy exists to dictate who shall be listed as registrant. It is all too common for the person handling the registration to give their own name as registrant. It is equally common for a licensee or distributor to be allowed to register in its own name under the false perception this is necessary or the simplest solution.
- By whom are the domains managed, and who decides which should be registered, or should (or should not) be renewed?
- Consider whether there are sufficient issues to warrant concentrating management in the hands of a professional management firm, especially if this is able to provide added value (for example in the field of domain name recovery). Consider also opting for automatic renewal of domain names. My own firm automatically renews all domain names for which we are responsible, unless specifically instructed to cancel them; it is cheaper to refund a renewal fee inadvertently paid than to try to recover a lost domain name.
- Who is actually responsible for working out what to do with those domains and the locations they should point to?
- Indeed, do you know where all your domain names point?
- Registrars and hosting companies often point domain names for which they have received no firm instructions to advertising sites, from which they collect the revenue. Case law makes it clear that in the event of a dispute over the domain name, the registrant is deemed responsible for any misuse of the domain name even when unaware of it.
It is imperative to have a clearly defined policy made known to all employees covering 1) precisely which employee or employees may (a) request and (b) authorise registration of a domain name and 2) clearly specifying who will be named as (i) registrant and (ii) technical contact and (iii) administrative contact and 3) identifying through which registrar or domain name management company any domain will be registered. Conduct a thorough audit of all domain names you may own (either directly or indirectly in the name of an employee, distributor or licensee) and ensure that they are all transferred to your chosen registrant. It should be made clear to all concerned that they are not permitted to register domain names in their own names, not least because if there is a clear written policy it will be easier to identify breaches of that policy when arguing that a domain name may have been registered in bad faith (a necessary condition of many established recovery procedures, discussed below).
Employees frequently register domain names on line and identify themselves as registrant or as technical or administrative contact. If that employee leaves, then in the case of a employee who is named as registrant you may face an uphill struggle to recover the domain name, in the case of an employee named as Administrative contact, emails from the registry will not be received, if a private personal email address has been given or if the employee’s in-house email is closed down, with the risk that the domain may not be renewed. Senior management must dictate and preserve any passwords used because that may be crucial to recovery, in the event the employee does leave and refuses to co-operate. Any licence concerning the use of the IP, should include a clause to ensure that domain names cannot be registered by the licensee, so that if any domain name is registered by the licensee there can be no question that bad faith was involved (a crucial element in domain name recovery).
Best practice is never to allow a licensee to actually own a domain name, even in a local geographic territory. Domain names can be pointed to any web site, whether or not owned by the domain registrant. Even if there are regulations that registrants must have local domicile, it is usually possible to use a local professional contact (such as a well-established trade mark attorney) to hold a domain name on behalf of a company.
Most, but not all, domain name registries offer an Alternative Dispute Resolution (ADR) policy (the best known of which is ICANN’s UDRP). Nominet, the UK registry, offers its own brand of ADR as do Eurid who run the European Domain Name Registry. Unfortunately not all registries do offer ADR, and there are key differences in these procedures, so do not assume that all domain names can be recovered by UDRP.
Sometimes there can be no alternative to litigation in the courts and indeed, to recognise when there is no option but to buy a domain name; for example if ADR is not available or litigation will be prohibitively expensive, or if there is no justifiable complaint that can be brought against the registrant.
It is definitely worth keeping a close eye on developments in the domain name world, which is very fast-moving compared to trademark registrations and is becoming increasingly important with the expanding use of the Internet as the main method of trading commercially.
Maggie is a UK trade mark attorney and a European trade mark attorney, a Fellow of The Institute Of Trade Mark Attorneys, and its current President. She is also a Member of INTA, ECTA and MARQUES. Maggie has worked for the Californian-based Raychem Corporation, and was seconded to San Francisco in 1987. She later returned to England, working for the then Beecham Group (now GlaxoSmithKline), before moving to British Telecommunications PLC. Maggie became a partner in Surrey based Alexander Ramage Associates in 1991, and has been active on ITMA Council for the last nine years. Maggie can be contacted on +44 (0) 1483 750 701 or by email at firstname.lastname@example.org