Securing Domain Name Registrations

They are based at 28-33 Cato Street, London W1H 5HS.Telephone: 44 (0)171 396 5676;email nwood@netsearchers.co.uk.See netsearchers.co.uk.

Faced with the choice between a quick domain name registration costing £200or an even faster one costing £100, which would you choose?

Hardly surprisingly, many people who are not Internet aware choose the latteroption. Perhaps they are influenced by the alarming exhortations of the domainname sellers in the Internet press whose advertisements spur thousands to actionevery day. ‘Register your name before someone else beats you to it’ saythese adverts – and the statistics bear them out.

At the end of March 19998, there were 3,246,527 domain names registered. Thetop three country code Top Level domains were Germany (125,722 under .de), theUnited Kingdom (116,396 under .uk) and Sweden (52,069 under .se). InterNICmeanwhile is averaging 108,000 .com registrations per month and now holds nearly1.7 million domains.

However, many of the people who choose cheap, fast registrations live toregret it. Whilst they might have saved £100 and four hours, the final cost ofan insecure registration in terms of money and time far outweighs such modestsavings. A domain name registration without a search is an insecureregistration. It might be one character, even a hyphen, different from anotherregistration at the same registry, and the owner of that other registrationmight feel that you are infringing his rights. Or the name might be identical toa registration used by a company at another registry, perhaps in anotherterritory, confusing your clients and their clients.

Getting the name you want is not enough either. The registration record needsto be correctly completed in case the registry sends a renewal notice to yourdomain name registration company instead of to you… and they might not forwardit on to you. Or you might wish to sell or transfer the domain name only to findthat the registration record shows your name spelt incorrectly (if it appears atall) and the registry refusing to process your request without lawyers’letters. Even worse, you might find the name on the record is not yours but thatof a former employee, someone who you are now in dispute with, someone who isprepared to hold onto your registration as a bargaining chip…

All of this is compounded for UK companies by the fact that InterNIC, theregistry operated by Network Solutions Inc in the USA for generic Top LevelDomains (gTLDs), as well as Nominet UK, the national domain registry for the UK,are amongst the one third of the 180 domain name registries in the world whosepre-registration requirements are sufficiently open to allow anyone basedanywhere in the world to register any name whatsoever. The onus is uponcompanies and individuals to police their own names and marks.

If these are just some of the reasons why it is necessary to register domainnames with care, what are the practical steps that can be taken to make andsecure a domain name registration?

This article aims to outline the practicalities of safe domain nameregistrations, starting with the choice of registration agent and the importanceof pre-registration searches, moving to the registration process itself andfinally touching on the management and maintenance of domain names.

Choice of Registration Agent

It is possible for companies to register domain names themselves. There islittle mystery about the process if you have the right equipment and Internetconnectivity. Most companies prefer to work through a domain name company,perhaps chosen on the strength of advertising in one of the Internet magazines,in the same way as they will use a company formation agent or a trade markagent.

The standard of service provided by domain name registration companies (or‘registration agents’ as some of the official registrars such as Dr WillieBlack, Managing Director of Nominet UK, prefer to call them) varies enormously.

When choosing a registration agent, ask:

• Have they ever been involved in litigation or disputes involving the name registry that you are interested in?
  
• How many domain names do their company or its representatives or associates own themselves and do they ever register names to themselves to sell on to other people?
  
• Do they have any pre-registration policies of their own – such as checking whether someone asking for a registration for BANK-of-ENGLAND has any authority (there are three .com versions of this name at InterNIC)?
  
• How will your name and their name appear on the registration record?
  
• Do they house names on their own servers or sub-contract this task to someone else? If they use their own servers, what back-up facilities do they supply?
  
• What guidance can they give on the dispute policy of the registration authority you are interested in? What is their policy concerning name conflicts?

Check what services they offer:

• Are they domain name specialists or is their main business connectivity, web site hosting or design?
  
• Do they offer name hosting and e-mail forwarding and for how much?
  
• Do they transfer names free of charge?
  
• Do they offer renewal reminders?
  
• Are they involved in the running of any NICs (Network Information Centres or registries)? If so, what is their policy towards famous names? Do they let anyone register a famous name?

Finally check their Terms & Conditions and ask about the contract thatyou will have with the registration authority: For instance, for .co.ukregistrations, can they supply you with a set of Nominet UK’s Terms andConditions? After all, you have the contract with the registration authority aswell as with the registration agent.

If the person you are talking with cannot answer any of your questions toyour satisfaction, go to someone else. The biggest domain name companies or ISPsare not necessarily the best.

The Importance of Pre-Registration Searches

Most registration agents will sell a name without undertaking any checksother than an availability search. When you request a name, they will query thedatabase of the registry or NIC for an exact match to your name. If there is nomatch, they will sell you the name.

This means that if you wanted to obtain netsearchers.co.uk , you might missnettsearchers, net-searchers, netsearches, the-netsearchers etc. all registeredat Nominet UK to other parties. You would also miss exact matches at otherregistries, most importantly InterNIC for netsearchers.com, as well asvariations you might feel to be confusing such as netsurfers.

The consequence of this is that you might infringe someone else’s rights aswell as missing registrations that dilute or conflict with your own name.

To avoid this it is necessary to devise a search strategy which is aseffective as any trade mark or company searches that you might commission. Youcan either search yourself if you have the right connectivity and knowledge ofdomain name look-up systems such as the ‘whois’ tool, or you can commissiona search from a specialist agency. Search International and Compu-Mark are twoagencies offering domain name searches.

The search strategy must suit your needs. Some people restrict the search,for instance to names registered in the UK and at InterNIC (everything ending inthe suffixes .uk or .com). Best of all is a worldwide search.

The terms of the search need consideration. ‘Whois’ tools do not allowsearchers to identify similar variations on a term, focusing instead on an exactmatch. Thus you either need to run consecutive searches for variations or tocommission a search from someone who can offer you the security brought by asearch program that uses wild card characters.

Thus, although you might be able to list four or five versions of BANK ofENGLAND (such as BANKOFENGLAND, THEBANKOFENGLAND, BANK-OF-ENGLAND,THE-BANK-OF-ENGLAND) and search for these variations in jurisdictions where theregistries offer ‘whois’ programs, it is unlikely that you will be able tofind INTERNET-BANK-OF-ENGLAND or BANK-OF-ENGLAND-AND-SCOTLAND.

The final element of your search strategy is to decide what you wish tosearch for. If you are looking to clear a name before registering it you need toknow:

• all names that contain elements of the character string of your preferred name
  
• who the name has been registered to
  
• who appears on the registration record as a named contact
  
• where these people are based
  
• when the name was first registered (This is important for .com registrations because the InterNIC Dispute Policy favours appellants who can produce a trademark certificate that exactly matches the domain name character string but pre-dates it).

The record can also reveal other facts depending upon the amount of data theregistry makes available. It might include the address details ofAdministrative, Technical and Billing Contacts who may not be the same as theregistered owner of a name; these might be other people from within the sameorganisation or at an ISP. The record might also show the servers on which aregistration is held; it is useful to see what other registrations are held onthe same servers – there might be other names belonging to you or to othertrade mark owning companies. Sometimes the record will show the status of thename, for instance whether the name is on hold or not. Some registries, like theSouth African, will also drop into the ‘Registered To’ field a reminder ifthe name is due for payment.

The next issue to address is where to look. Refer back to your strategy toidentify the jurisdictions that are of most importance to you, but remember thataround the world domain name registrars operate systems of their own designed totheir own rules. Some countries, like Germany, used to operate Reserved lists,and some names linger on in these forgotten lists. Others, like India, do notalways delegate registered names straight onto the domain name system, so ensurethat you check at the registries themselves.

If you find a match, use the domain name as part of a URL for a web site. Ifthere is a web site, review every page for names and addresses. Capture evidenceof how the name is being used by printing each page with the time and date incase you need to bring a legal action. Also use the Internet search engines thatare easily or freely available (from Alta Vista to meta search engines) to seehow your chosen term appears and if the organisation or individuals who haveregistered conflicting names feature.

If you feel that the conflicting registration is an infringing registration– undertaken by a pirate for profit, someone with a grudge against yourorganisation or an activist opposed to aspects of your work – you might wishto undertake further searches.

• You can search for other registrations using the same character string. The infringer might have registered variations of your name or mark. This will show if he (it is nearly always a he) is a pirate with a record of infringement. You might then be able to join with other infringed companies to reduce the cost of action.
  
• You can also search to establish what other registrations are held on the servers and who owns these servers. If the infringer is disguising his or her tracks inside an institution like a college, this can sometimes give you a person in higher authority on whom you can focus.

Never simply rely upon the domain name search engines that some domain nameregistration agents offer for free at their sites. You do not know how accuratethey are (they might be using out-of-date cached copies of databases) or whatinformation they record on search queries.

In summary, the golden rules of pre-registration searching are:

1. Search for variations on a name, not just for exact matches.
   
2. Search broadly: your name can easily be registered in countries that although hundreds of miles away, can easily and simply be accessed by your clients, customers and contacts. Domain name registries in countries like Russia, South Africa, Switzerland or Israel follow the UK and InterNIC by allowing applicants based anywhere to register a name without showing a right to use it.

Making the Registration

Once you are secure in the knowledge that your choice of name is free, actswiftly to secure it. With one domain name being registered every seven secondsat InterNIC alone, delay can invalidate your searches.

Ensure that you know the name options open to you – sub- or second leveldomains may carry different rules. For instance, in the UK anyone can register aname under the .co.uk suffix. But to register under the .plc.uk or .ltd.uksuffix you must be that plc or ltd company; you must supply your companyregistration number; and the domain name you apply for must match character forcharacter your company registration (though you can put in hyphens for spaces).

Always check on the Terms and Conditions operated by the NIC you want toregister with.

• How much do they charge for a registration in the first year?
  
• How much do they charge for renewals?
  
• How many years do you pay in advance?
  
• What is their policy for disputes?
  
• How much data on your registration will they make available?
  
• What certification will they provide you with to confirm that you have a contract with them?

This is equally important for foreign national registrations. Some 120 of the180+ NICs have pre-registration requirements. Some countries limit you to onename per company, others insist that the name you register must be close to yourcompany name while specific requirements include membership of a Chamber ofCommerce (Italy), the longitude and latitude of the business (Canada), theprovision of a VAT number (Greece), the working hours of the technical andadministrative contacts (Argentina) etc. The table below sets out some of thevariations that can be found in Europe.

There can be idiosyncrasies over the status of a domain name, too. In Chile,for example, any newly registered name can be challenged within 30 days ofregistration by the simple process of registering the same name again. At theend of the 30 days, the rights of competing claimants to a name are consideredunder a process of arbitration.

If you are going to undertake a registration of a portfolio of foreignnational domains, specify the country by name not suffix when ordering –unless you are certain that you know your ISO 3166 country codes. We know a lawfirm that specified registrations for a major client in .ge (Georgia) when theywanted .de (Germany)!

When placing your order for a registration, insist that the registrationagent puts your name on the registration record, not his own. Don’t just trustthat the agent has registered your name either, or pointed it to the rightplace. Check the domain name record and verify that the name is operationalbefore paying the agent. A well-known football club paid an agent to registervariations of their name, only to be forced to buy them for a second time whentheir agent disappeared with their money and someone else beat them to theirnames.

Registration Requirements in Selected European Countries

Managing a Domain Name Portfolio

Once you have secured your domain names, consideration must be given tomanaging them. Domain names need to be hosted and renewed. You might want tosell or transfer them or point them from one site to another.

Key domain name management activities include the following.

• Creating a database of domain name registrations including details such as renewal dates, who appears on the registration records, where the domain points. (For larger companies, we operate a web-based system allowing company representatives based anywhere in the world to log onto a secure site with a password and view records. Requests for changes or new registrations can be e-mailed on a form that is sent to the client and to us).
  
• Establishing a system for renewals. It is one thing to be beaten to a name by someone with a right to use it. It is quite another to have a name suspended or deleted because a renewal name was missed, especially if the domain name has been featured on company publicity.
  
• Reviewing registration records to ensure that they feature both named and role contacts. This means that if the named individual leaves your organisation, a renewal reminder will get through to the named contact (such as Renewals Administrator @ XYZ.co.uk). If there are any mis-spellings of names, it might be that transferring a name will be held up whilst you prove to the NIC that you are in fact the owner of XYZ.co.uk, even though it says on the registration record that the name belongs to XZY Ltd. A simple typographical error by your registration agent could cost you time and money in this way.

Finally, you might wish to monitor your names on a systematic, professionalbasis in the same way as you or your clients monitor for trade marks. GlobalDomain Name Watching is a service that every IP professional should consider.After all, what is the point of registering a name if you are not going toprotect it?