The management of domain names and metatags within a company Cyprus

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The management of domain names and metatags
within a companyCyprus Nicosia October, 2003

• Etienne Wéry,
• Attorney - Brussels and Paris bars
• Senior Lecturer  Université Paris I (Sorbonne) 
• etienne.wery_at_ulys.net
• http//www.ulys.net
• http//www.droit-technologie.org

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Table of content

1. Before the registration of the website
2. Registration of a website
3. Using a domain name
4. Enforcement issues

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Why is the domain name management so crucial ?

• An example GlaxoSmithKline

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I. BEFORE THE REGISTRATION OF A WEBSITE
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I-A Creation of a permanent Domain Name Task
Force (DNTF)

• 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.

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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)

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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.

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Examples (1/2)

• Microsoft has the DN ltmicrosoft.comgt and also
  ltmicro-soft.comgt

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Examples (2/2)

• BUT Microsoft has not the DN ltmicrosotf.comgt
  (microsoTF.com) and someone else registered it
  (typosquatting).

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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)

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I-C Choosing Metatags (2/3)

• Example Terry Welles vs. Playboy

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I-C Choosing Metatags (3/3)

• But also unfair purposes to illegaly increase or
  divert traffic from a competitors 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)

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I-D Opting for a gTLD or ccTLD (1/2)

• Sometimes the situation is simple
• One company commercialy active in one country
  registration of the relevant ccTLD.
• Worldwide companies
• ex Coca-Cola
• Often it is more difficult
• Multi-location companies (wich ccTLD and / or
  gTLD ?).

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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)

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I-E Verifications prior to registration

• Which verifications ?
• WHOIS? Database
• ccTLDs particular rules

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I-E Verifications prior to registration

• Why ?
• Multiplicity of ccTLDs rules
• Still possible to amend plans
• Anonymous, quick and easy (otherwise risk of
  companys secret divulgation)
• To Avoid bad publicity

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II. THE REGISTRATION OF A WEBSITE
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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

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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.
• E-mail address generic and continually
  monitored and operated. (alias)
• Postal address the head office or the place
  where the contact is located.
• Phone number

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II-C The allocation of a DN

• gTLDSs (.com, .org, .net,) normally  first
  come, first serve .
• By exception particular conditions (Ex
  lt.museumgt, lt.aerogt.
• 2) ccTLDs sometimes  first come, first serve 
  BUT OFTEN strict registration policy.

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II-D Metatags

• The use of METATAGS
• No registration procedure
• Possibility of infringement to IP rights,
  trademark, fair competition rules,

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III. USING A DOMAIN NAME
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3 main possibilities (1/2)

1. Defensive registration register a DN without
   using it.

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3 main possibilities (2/2)

• Waiting page ex  under construction 
• 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.)

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IV. ENFORCEMENT ISSUES
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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

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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

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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.

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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 ?

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IV-B Enforcing ADR (4/6)

• Bad faiths 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.

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IV-B Enforcing ADR (5/6)

• UDRPs 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

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IV- Enforcing legal proceedings (6/6)

• III. Legal proceedingss 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.

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Questions Comments Etienne
Wéry,Attorney - Brussels and Paris barsSenior
Lecturer  Université Paris I (Sorbonne) etienne
.wery_at_ulys.nethttp//www.ulys.nethttp//www.droi
t-technologie.org