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What's in a Domain Name?

Columnist: Scott Gerien
February, 2012 Issue
Columnist

Scott Gerien
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For this bonus issue of NorthBay biz, I don’t have a real sexy topic, but it’s something I get a lot of questions about as a trademark lawyer: Internet domain names. When speaking of Internet domain names one must start at the top-level domain, also known as “TLD.” The TLD is the extension at the end of a domain name, so in the domain name www.northbaybiz.com, “.com” is the TLD.

The most commonly used TLDs are generic top-level domains, or gTLDs. Examples of gTLDs include .com, .net, .org. and .info. The gTLDs operate under policies established by the Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit corporation responsible for many facets of the Internet, including coordination of use of the unique identifiers of the Internet. ICANN directly selects and qualifies companies to act as registrars of domain names under the gTLDs pursuant to ICANN policies.

After gTLDs, the next most common TLDs are country code TLDs, called ccTLDs. The ccTLDs are assigned to countries based on the country’s two-letter ISO code (for example, .mx for Mexico). The respective countries are then responsible for the use and the policies related to the ccTLD. For example, some countries, such as Canada (.ca) and Germany (.de), require that, to register a domain with their ccTLD, the registrant must demonstrate local presence in the country. Other countries have gone to the other extreme and commercially licensed their ccTLDs to outside companies for registration to the general public. As an example, the country of Tuvalu partnered with a domain name registrar to market its .tv ccTLD to those interested in “television”-oriented domain names.

At present, there are almost 300 TLDs, a complete list of which can be found on the Internet Assigned Numbers Authority website. Despite this, ICANN continues to consider expansion of TLDs. In 2010, ICANN began considering applications for internationalized country code top-level domains encoded to display the domain names in the language-native script of the country, such as Arabic or Chinese.

In 2011, ICANN also accepted a new, privately sponsored TLD of .xxx targeted to the adult entertainment industry. ICANN has also proposed establishing TLDs of any length that may be owned and used by one party. Examples could be a party’s trademark, such as .coke, a generic term, such as .soda, or any other letter, number and character combination. Of course in offering such TLDs, ICANN will charge a significant fee of $180,000 and, if a trademark owner decides not to register its trademark as a TLD, it’s unclear what will happen if someone else does.

So, with almost 300 different TLDs available, clients often ask me how they should go about registering TLDs for their brands. Well, if you’re Coca-Cola and actively do business throughout the world, then perhaps you do want your trademark protected as a domain name across numerous TLDs, especially ccTLDs. However, for most companies, this simply isn’t practical and a single gTLD, preferably .com, will be sufficient.

Recently, some unscrupulous parties representing themselves as domain name registrars in Asia have been sending trademark owners emails to the effect that a third party is trying to register the trademark owner’s mark as part of a domain name with an Asian ccTLD. The email looks quite genuine in that it’s personalized to the company in some respect, specifically references the company’s trademark being applied for in a ccTLD, and even identifies some nonexistent third party that sounds like a real company. The purported domain name registrar then inquires if the third-party company is related to the trademark owner and advises the trademark owner that, if it doesn’t respond within some set period of time, the registrar will let the third-party company register the domain names with the trademark owner’s mark with the ccTLD.

We sometimes receive five to seven client inquiries per week about these types of emails (they seem to send them out in bunches based on geographic region). These emails are scams and, if a trademark owner responds to them, the purported domain name registrar will buy the domain names and then sell them back to the trademark owner for an inflated price. If the emails are ignored, the domain names will usually be left alone.

We advise clients to ignore the emails and, if they’re truly interested in obtaining domain names for the various Asian ccTLDs, they can do so through legitimate domain name registrars. However, we also advise clients that, due to the sheer number of TLDs, they should consider the practicality of trying to register for numerous TLDs, especially ones specific to countries where they don’t do business.

While domain names are useful business tools, they don’t provide anyone with any legal right to a term. In the context of discussing trademark protection, people will often tell me they’ve registered a term as a domain name. I inform them that this is great, but unless one files a trademark application for the term for particular goods or services, or uses the term on or in association with particular goods or services, the domain name will not let them claim any legal right to the term, only the practical benefit of using the domain name if the use is legitimate.

ICANN has specific policies for gTLDs that prohibit the registration of a domain name that’s the trademark of another party and is being registered for purposes of cyber squatting or preventing the trademark owner from acquiring the domain name for its own use. While these policies don’t apply to all ccTLDs, many countries with legitimate interests in regulating their ccTLD also follow such policies. Therefore, if a party goes to register its trademark as a domain name and someone else has registered it in an effort to cyber squat and sell it back to the trademark owner, the trademark owner has recourse in bringing an action under the ICANN Uniform Domain-Name Dispute Resolution Policy.

So, realize there’s usually recourse and don’t panic when you receive an email telling you someone is registering your mark as a domain name in Asia. The best course of action is usually to hit delete.
 

 

 

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