Cyprus – Nicosia October, 2003 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) »

Table of content I. Before the registration of the website II. Registration of a website III. Using a domain name IV. 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) 2) Outsourcing issues? 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 and also

Examples (2/2) BUT Microsoft has not the DN (microsoTF.com) and someone else registered it (typosquatting).

I-C Choosing Metatags (1/3) 1) No registration. 2) Fair purposes : cross-references, comparative commercials, group of companies, … 3) 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) 1. Sometimes the situation is simple :  One company commercialy active in one country: registration of the relevant ccTLD.  Worldwide companies ex : Coca-Cola 2. Often it is more difficult :  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 1) Which verifications ?  WHOIS? Database  ccTLD’s particular rules

I-E Verifications prior to registration 2) Why ?  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) Registrant : the company (not employee, ISP or even CEO); 2) Administrative contact : operational power; qualified employee; 3) 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) address : generic and continually monitored and operated. (alias) 2) Postal address: the head office or the place where the contact is located. 3) Phone number

II-C The allocation of a DN 1) gTLDSs (.com,.org,.net,…): normally « first come, first serve ». By exception: particular conditions (Ex:,. 2) 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) Necessary if DN are considered as assets 2) Often outsourced to a specialized provider / Law firm 3) 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 Dispute- Resolution 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$ and US$ 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) »