Dublin, May 2, 2003 Corporate Domain Names Management Dublin, May 2, 2003 Etienne Wéry, Attorney - Brussels and Paris bars Teacher at « Université Paris I (Sorbonne) »

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

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

I-C Chosing Metatags (1/3) 1) No registration. 2) Legal purposes: cross-references, comparative commercials,… 3) 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) But also illegal purposes: illegaly increase or divert traffic from a competitor’s website e.g. 5) The DNTF must cooperate with all involved departments to establish a list of usefull metatags. 6) Contractual provisions in case of sponsorship.

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. 2. Often it is more difficult:  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 1) Verify what?  WHOIS? Database  ccTLD’s particular rules

I-E Verifications prior to registration 2) Why this prior verification?  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) 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? 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) address: generic and continually monitored and operated. Il allows also info dispaching. 2) Postal address: the head office or the place where the contact is located. 3) Phone number

II-C The allocation of 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 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) Necessary if DN are considered as assets 2) Often outsourced to a specialized provider 3) 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 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 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 competition- related OR if the goal is to get money.

Questions & Comments Etienne Wéry, Attorney - Brussels and Paris bars Teacher at « Université Paris I (Sorbonne) »