1. 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) » etienne.wery@ulys.net http://www.ulys.net http://www.droit-technologie.org

2. Table of content I. Before the registration of the website II. Registration of a website III. Using a domain name IV. Enforcement issues

3. Why is the domain name management so crucial ? An example: GlaxoSmithKline

4. I. BEFORE THE REGISTRATION OF A WEBSITE

5. 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.

6. 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)

8. 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.

9. Examples (1/2) Microsoft has the DN and also

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

11. 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)

12. I-C Choosing Metatags (2/3) Example: Terry Welles vs. Playboy

13. 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)

14. 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 ?).

15. 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)

16. I-E Verifications prior to registration 1) Which verifications ?  WHOIS? Database  ccTLD’s particular rules

17. 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

18. II. THE REGISTRATION OF A WEBSITE

19. 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

20. 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) E-mail 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

21. 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.

22. II-D Metatags The use of METATAGS No registration procedure Possibility of infringement to IP rights, trademark, fair competition rules,…

23. III. USING A DOMAIN NAME

24. 3 main possibilities (1/2) 1) Defensive registration: register a DN without using it.

25. 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.)

26. IV. ENFORCEMENT ISSUES

27. 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

28. 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

29. 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.

30. 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 »?

31. 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.

32. 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$ 1.500 and US$ 2.200 for a conflict involving 1 to 10 domain names (1 panelist). Application to gTLDs and to certain ccTLDs

33. 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.

34. Questions & Comments Etienne Wéry, Attorney - Brussels and Paris bars Senior Lecturer « Université Paris I (Sorbonne) » etienne.wery@ulys.net http://www.ulys.net http://www.droit-technologie.org etienne.wery@ulys.net http://www.ulys.net http://www.droit-technologie.org