Until recently, as far as commercial businesses were concerned, the top level domains that mattered included ‘.com’; ‘.net’; and ‘.org’ and the 243 country code Top Level Domains (ccTLDs) reflecting countries of origin such as ‘.jp’ for Japan. With the recent introduction by the Internet Corporation for Assigned Names and Numbers (ICANN) of the new generic Top Level Domains (gTLDs)1 ‘.biz’ and ‘.info’ and ‘.eu’, brand owners now have to consider to what extent they need to secure their key brands in these new domains, if only for defensive reasons. Furthermore, as the nature of the Internet community evolves and the proportion of non-native English speaking Internet users is about to exceed native English speakers,2 a brand owner needs to build the newly emerging non-roman script Multilingual Domain Names (MLDs) into its world view. However, it is clearly impossible to register every possible variation of domain in every top level domain and language. This article conducts a brief review of the pros and cons of each type of domain in the context of registration of a company’s main brands. It then goes on to consider prioritising registration of a company’s names in domains including variations on main brands and discusses how best to formulate a registration strategy to protect a company’s interests, yet keep its stable of domain names manageable and efficient.
Traditional Commercial Top Level Domains
By far the most successful domain name to be introduced into the DNS is the ‘.com’, representing around 65% of all domain names registered. However, many of the most attractive combinations of words have already been taken, whether by legitimate users or domain name speculators. Despite the backlash against ‘.com’ due to the failure of many ‘.com’ based businesses, ‘.com’ is generally still regarded internationally as the most important domain in which to register. ‘.net’ and .org domains have historically had a significance for Internet service providers and charities respectively. Although there are no actual restrictions on who can register, these domains retain these connotations and have always been less popular than ‘.com’s for businesses generally. The main reason to register these is usually defensive, ie to prevent cybersquatting problems.
Country Code Top Level Domains
There are currently 243 ccTLDs including ‘.uk’ for United Kingdom; ‘.fr’ for France; ‘.de’ for Germany. Many of the domain name registries allow anyone to register in their domain, however, some countries impose restrictions such as the number of domain names which can be registered, a requirement for a local establishment in the country of registration or that the domain name registration matches the corresponding trade mark registration and the domain be registered in the name of the trade mark owner. Some countries, such as Nepal and Pakistan, will make exceptions to their local rules to allow big multinational businesses to register domain names.
Brand owners need to be aware that the ccTLD rules as to who can register and what is registrable in individual country codes are constantly changing and keeping up to date takes some effort. Country code registrations for main brands are worth considering for major trading countries and countries where cybersquatting is likely for whatever reason. Registrants should be aware that registering in any particular country code may subject the registrant to jurisdiction of the courts in the country concerned with regard to disputes over the domain name.
‘Vanity’ ccTLDs
There are also so called ‘vanity’ ccTLDs which may be of interest to brand owners (and therefore cybersquatters) include ‘.tv’, run by the registry of Tuvalu, which can be used to denote ‘television’; ‘.fm’ and ‘.am’ run by Micronesia and Armenia Registries, which can both be used to denote a radio band; and ‘.nu’ run by the Niue registry, which can be used phonetically to mean ‘new’ or in French ‘nude’ and in Swedish ‘now’. Vanity domain names tend to operate a very open registration policy which will allow virtually anyone to register any domain name they wish.
Third Level identifiers
Many ccTLD Registries only allow domain name registrants to register the third level element of a domain name as the second level element has been reserved. For instance, a brand owner cannot register ‘trademark.uk’ and will only be able to register ‘trademark.co.uk’ or ‘company.plc.uk’ and ‘company.limited.uk’ (the latter two are restricted to the registrant’s company name listed on the Companies House register).
‘.biz’
‘.biz’ is restricted to ‘bona fide business or commercial use’ only. This restriction is aimed at stemming domain name speculation, personal non commercial use and fan/hate Web sites. From this point of view, there should be fewer cybersquatting problems in this domain, but there will be plenty of tussles between competing legitimate businesses with interests in the same name.
Prior to going live, NeuLevel (the ‘.biz’ registry which accepts applications through around 90 ICANN accredited registrars) took 160,000 pre-registrations and started taking registrations for additional domain names on a first-come, first-served basis when it went live on 7 November 2001. By 13 December 2001, NeuLevel announced that it had exceeded half a million registered domain names, a very healthy start.
However, while the ‘.biz’ registration of the main brand of a company is a welcome addition to its domain name portfolio and can be useful defensively to avoid the cost of disputes, it is questionable whether a ‘.biz’ is as valuable as a ‘.com’. One problem is that no one can predict if ‘.biz’ will in fact be a success in its own right or will simply be another top level domain in the collection, with ‘.com’ remaining the crown jewel. On balance, our recommendation is that a company should secure the ‘.biz’ for its main brands, but not worry or spend too much if its application fails. If money is tight, ‘.biz’ registrations cannot yet be regarded as a ‘must have’, but as a rather speculative investment. Courts or ICANN proceedings3 should be adequate to defend IP rights if they are infringed.
NeuLevel introduced an intellectual property claim service during the initial launch of the ‘.biz’ gTLD to help brand owners protect their IP rights. The system works by notifying an IP claimant when a domain name application which exactly matches the IP claim is successfully registered. The domain name will be placed on hold for a period of 30 days during which the IP Claimant may seek to enforce their IP rights by initiating legal proceedings, Start-up Trade mark Opposition Policy (STOP) proceedings or settle the dispute. This gives an opportunity to nip any cybersquatting in the bud.
NeuLevel, ICANN and most of the ‘.biz’ accredited registrars have had a law suit filed against them in the Los Angeles Superior Court in the State of California. The law suit alleges, inter alia, that the method used for assigning the domain names during the start-up period constituted an illegal lottery under Californian law. Rather than have these domain names tied up pending the final outcome of the litigation, NeuLevel has decided to open up these domain names to a new registration process:
- Would be applicants will have the opportunity to re-submit applications for domain names on ‘registry reserve’ from the beginning of February 2002 for a period of 30 days.
- In early March the domain name applications will be matched against the existing IP claim database and exact matches will result in the standard notification to the IP claimant.
- Apart from instances where the domain name applicant elects not to proceed due to a conflict with an IP claim, all domain name applications will be queued by each registrar.
- The domain names in these queues shall be randomised by NeuLevel and the new selection process will begin. During each round of domain name selection, if an application matches existing domain names it will be discarded and the registrar will lose its turn. This process will continue until the last domain name has been procesed.
Clearly matters are much simpler if there is no competition in ‘.biz’ for the name required. Where registrations are straightforward, registration of main brand names is recommended, if only for defensive reasons. Registration is a lot cheaper than ICANN UDRP proceedings to recover a name of proceedings through the courts. Where the registration cannot be secured, cybersquatters should be easily defeated under the STOP or ICANN procedures on the grounds that there is bad faith or that the domain has not been registered for a commercial purpose within the eligibility requirements. The more thorny problem is much more likely to arise where a business which has a legitimate claim to the name has been lucky enough to be allocated the name instead of you. In such circumstances it is highly questionable whether it is worth spending money on ICANN or court proceedings as the crucial element of bad faith will often be absent. In such cases it might be better simply to monitor the usage to which the name is put and be ready to take action if appropriate.
‘.info’
‘.info’ is the only new completely unrestricted domain. As such speculative domain name registration and cybersquatting is much more of a danger for brand owners in this domain.
It appears ‘info’ is at least as popular as ‘.biz’. Afilias (the ‘.info’ registry) claims that more than 675,000 ‘.info’ domain names have been registered to date, and that nearly 70% of the world’s most valuable brands have registered ‘.info’ domain names.
The ‘.info’ domain name roll out began with a sunrise period in July 2001 which allowed trade mark holders to register their exact marks. At the end of September 2001 Afilias announced the results of the sunrise requests and granted around 300,000 domain name registrations. In the beginning of October 2001, the ‘.info’ registry moved into real-time registration and anyone could register any name in the domain not already taken.
Afilias has come in for a lot of criticism as many applicants during the sunrise period did not actually own trade marks and provided false details to obtain registrations. In order to deflect this criticism, Afilias has announced its intention to exercise its rights under the sunrise challenge process and submit a bulk challenge against the remaining sunrise domain names that appear to be invalid on their face, a list of which will be released prior to initiating bulk challenge. Those names that are successfully cancelled as a result of the bulk challenge, as well as requested deletions/cancelled domain names due to the challenge proceedings, will become publicly available for registration early this year.
On the desirability of registration of main brands in ‘.info’, many of the comments applicable to ‘.biz’ apply to ‘.info’ also. Whilst ‘.info’ registrations for main brands are nice to have, they cannot yet be considered essential, although it is difficult to predict how valuable they may one day become. In the meantime, if registration fails or money is very tight, the courts and ICANN proceedings should be adequate to defend IP rights if necessary in the future. However, because ‘.info’ is unrestricted, on balance the advice must be to try to obtain registration if easily done, as the potential for disputes due to domain speculation is certainly higher than in relation to ‘.biz’ (as for ‘.biz’ defences such as free speech for fan or hate sites and personal non-commercial usage will not be available). Also, it is arguable that ‘.info’ may be a more attractive domain than ‘.biz’, which perhaps sounds a bit ‘jazzy’ and has a more restrictive connotation.
‘.name’
In ‘.name’ domain name registrants can only register their personal name as an individual or a near variation thereof or the name of a fictional character provided they hold trade mark rights in that character’s personal name.4 From this point of view the only businesses interested in securing registrations will be the ones which are based on the merchandising of fictional characters (eg ‘bertie.wooster.name’) or where the name of the business is the name of an individual (eg ‘john.lewis.name’). The sunrise period, during which the first round of domain name applications were accepted, ended on 17 December 2001. Real-time registrations are expected from May. Since it will be seen largely as a non-commercial domain, again it is highly unlikely to compete with ‘.com’ for corporate registrations. Businesses such as those mentioned may regard the registrations as small investments if easily available, but they cannot yet be regarded as essential. If cybersquatters register large numbers of names with which they have no connection they can be challenged by ICANN proceedings for contravention of the eligibility requirements.
Global Name Registry (the registry responsible for ‘.name’) have introduced a system of defensive registrations for brand owners. There are two forms of defensive registrations, premium, which will prevent registration of the trade mark and variations thereof; and standard preventing registration of the exact mark. An applicant for a defensive registration must have had a valid trade mark, having national effect prior to 16 April 2001. Applications for defensive registration ended with the sunrise period last month. It is forecast that defensive registrations will not be available again until the fourth quarter of 2002. However, Global Name Registry also offers a NameWatch service which will continue with batches being processed every 10 days. This service monitors specific names and words and provides the subscriber with regular electronic reports of any conflicting registrations.
In practice we believe the NameWatch service is much the better option. Defensive registrations are complicated, costly and can be cancelled in circumstances where a single successful challenge is made to a joint second and third level defensive registration or three successful challenges are made to a second or third level defensive registration by individuals who have genuine claims to the name. NameWatch is relatively cheap and simply alerts as to any problem registrations so action can be taken if appropriate. Accordingly, we have not been recommending Defensive registrations to our clients.
.pro
‘.pro’ domain names are to be designed exclusively for use by accountants, lawyers, physicians, and other professionals. It is likely to be combined with second level sub domains such as ‘name.med.pro’ and ‘name.law.pro’. It is understood that the professional firms themselves will be able to register their corporate name, but the domain is not of much concern to other types of businesses generally. However, the ICANN agreement has not yet been concluded on this.
‘.eu’
On 12 December 2000 the European Commission adopted a proposal for a Regulation to create a registry to run the Internet Top Level Domain ‘.eu’.5 The Regulation will provide the legal basis for the creation of the central ‘.eu’ registry to run the system. The proposal for the Regulation is due to have a second reading by the European Parliament who have a deadline to produce their opinion by 15 March 2002.
Recent comments indicate that the ‘.eu’ TLD may not be confined to residents of EU member states as previously suggested. It is thought that there will be strong protection for trade mark owners with the opportunity to register their trade marks during a sunrise period. Registrability concerns are likely to be much the same as in the country code situation.
Multilingual Domain Names (MLDs)
At present, there are a number of providers around the world that offer MLDs, which it is hoped will resolve easily in the Domain Name System (which presently only uses roman characters) in the near future once the technical standards have been agreed and implemented.
VeriSign Global Registry Services has set up a ‘test bed’ in conjunction with ICANN and the Internet Engineering Task Force (IETF). Verisign states on its Web site that it offers domain name registration in 39 different character sets which cover over 350 languages. However, Verisign also states ‘Resolution of internationalized domain names has not yet occurred, and, although anticipated at a later stage of the testbed, cannot be guaranteed’. In order to view a Web site associated with such an MLD the registrant will have to ask its ISP specifically to configure their name servers to point to VeriSign’s ‘test bed’ sub-domain. VeriSign make it clear when registering international domain names that, as the standards for internationalised domain names have not been finalised, they give no guarantee about changes to the technical standard which may result in domain name registrations becoming invalid or deleted.
Other organisations offering foreign character domain names to be used with similar software solutions include Japanese domain names consisting of Chinese and Kana characters through JPRS6 (who require their registrants to configure their name servers as with VeriSign), Chinese domain names through CDNC,7 arabic and cyrillic names through ‘nativenames.net’, and various scripts through ‘walid.com’ and ‘i-dns.net’.
An effective domain name brand strategy should address the issue of the current MLD options, and plan for the future. It may not be long until MLDs do become generally accessible on the Internet, due to the market demand for them. Such a strategy should address the difficult questions as to whether the main brands should be translated into a foreign language and registered as a domain name in local script or purely transliterated and registered. Inevitably a brand owner will have to rely on local advice, particularly in a country such as China where there are about 40,000 different Chinese characters, of which 5,000 are in common use, each of which have their own meaning.
Because of doubts over which type of MLDs will function best in the long run on the Internet, it is generally only worthwhile for big companies to register their main brands in the most obvious forms with the various providers. Verisign’s MLDs will be subject to the ICANN registry procedures and, in general, the far eastern national registries have domain name registry policies not a million miles away from ICANN UDRP principles. The courts are also an option if cybersquatting occurs. As to registration strategy, however, this is one of the most problematic areas as it is not even clear yet from the point of view of functionality which type of MLDs are the best to register.
How Far Should a Brand Owner Go?
Once a brand owner has decided in which TLDs to register, it then has to decide which names or variation of those names it should register in those domains. Should a company register only its main brand in each chosen domain (eg ‘kodak.com’ or ‘kodak.co.uk’) or should it also register a wider selection of possible combinations to prevent cybersquatters, fan or hate sites from doing so (eg ‘kodakcamera.com’; ‘ilovekodak.com’ or ‘kodaksucks’). Also, unlike trade marks, generic words can be registered as domain names – so should Kodak register useful generic domains such as ‘photos.com’. Clearly a brand owner has to conduct cost/benefit exercise in respect of each trade mark/brand in determining how far its registration policy should go and considerations will differ from business to business.
How to Prioritise
Clearly, only comments of a general nature can be made in an article such as this, but the secret is to prioritise registration according to budget. Domain registrations seem to fall into three categories, dealt with in order of importance.
Must Haves
- Domain names your business wants to use.
- Main names and brands in ‘.com’ and most important trading country codes including most important MLDs and subdomains where appropriate (and ‘.eu’ when it becomes available).
- Vanity domains in particular industries such as television and radio (eg ‘granada.tv’and ‘heart .fm’).
- Remember registering your new brand as a domain name before publicising it is highly recommended!
Defensive registrations
- Main names and brands in ‘.org’, ‘.net’, ‘.biz’ and ‘.info’ and country codes or MLDs which are not trading territories but are high risk for cybersquatting.
- Most obvious variations of names (eg ‘kodakcamera’, ‘Ilovekodak’ and ‘kodaksucks’).
- Most obvious typo variations (eg ‘ferarri.com’ (real spelling ferrari.com)).
- Names and brands of lesser importance again to be prioritised – ‘.com’, then main country code domains and then the other TLDs according to budget.
Fun registrations
- Generic registrations such as ‘chocolate.com’.
- Novelty combinations like ‘drinkmoreco.ke’ in Kenya and ‘pep.si’ in Slovenia.
- Vanity domains (eg ‘thefullmonty.nu’).
Of course, individual businesses may have priorities which differ from the norm. Also, circumstances may lead to different considerations. For example, if the ‘.com’ has gone but a high profile domain name is needed for marketing, suddenly a fun registration might become the domain registration of choice.
Conclusion
In conclusion, most companies can survive on very few domain names. In reality, usually only one domain name is actually used and the main justification for a large portfolio is defensive – to avoid the hassle and cost of domain name disputes. As in all things, however, registration is a question of balance. Registration of all possible domain names defensively is just not possible and becomes more and more difficult as new TLDs come onto the scene. How far defensive registrations go is a question of budget. At the end of the day, the courts and the various ICANN/registry domain name dispute resolution procedures must be relied on to remedy the situations caused by gaps in portfolio registration. However, an intelligent approach to domain name registration can assist your business to have the most effective presence on the Net and help to prevent disputes which might cause real commercial disruption.
Dawn Osborne and Steve Palmer, Willoughby & Partners. www.iprights.com. Enquiries to dawn@iprights.com ©Willoughby & Partners January 2002
Endnotes
1. Due to the ever growing demand ICANN selected seven new gTLDs, namely, ‘.aero’ – restricted to the aviation industry; ‘.biz’ – restricted to business use; ‘.coop’ – restricted to co-operatives; ‘.info’ – unrestricted; ‘.museum’ – restricted to museums; ‘.name’ – for individuals and fictional characters; and ‘.pro’ restricted to professionals. At present the only ‘live’ new gTLDs are ‘.biz’ and ‘.info’. However, ICANN agreements have been completed for all new gTLDs except ‘.pro’ which is due to be finalised imminently, with a launch date expected in the second quarter of this year. All three ‘sponsored’ gTLDs, ‘.aero’; ‘.museum’; and ‘.coop’ are due to be launched in the first quarter of this year.
2. Currently 48% of Internet users are non-native English speakers. It is estimated that by 2003, 66% of all Internet users will be non-English speakers. Statistics from http://www.walid.com. By 2007 it is estimated that Chinese will be the primary language of the Internet.
3. ICANN’s Uniform Dispute Resolution Policy applies to all gTLDs. The UDRP has proved to be an effective procedure for trade mark owners to recover domain names which are identical or confusingly similar to their trade marks in circumstances where the domain name has been registered and used in bad faith and the registrant has no legitimate right or interest in the name. Dawn Osborne has produced a number of articles on this subject which can be found at the following links:
The ICANN decisions – what have we learned?
http://www.iprights.com/our_publications/articles/article58.asp?articleID=58
Don’t take my name in vain! ICANN dispute resolution policy and names of individuals.
http://www.iprights.com/our_publications/articles/article17.asp?articleID=17
ICANN dispute resolution – A resounding success!
http://www.iprights.com/our_publications/articles/article22.asp?articleID=22
ICANN or Court?
http://www.iprights.com/our_publications/articles/article23.asp?articleID=23
4. However, Verisign is expected to re-brand the ‘.net’ gTLD and Nominet UK is expected to launch ‘me.uk’ ccTLD as ‘personal’ domain names, presumably in direct competition with ‘.name’.
5. http://europa.eu.int/comm/information_society/policy/internet/registry_en.htm
