The Independent Counsel

Internet Law


Domain Names: Practical & Legal Concerns


Part I of II: Registrations


BY PAUL L. CRISWELL

Overview

Each computer that is on the Internet has a numerical address that allows other computers to "find" it to send e-mail or access a Web site at that address. Domain names let people use a natural language address for e-mail and Web browsing, rather than having to memorize and use long strings of numbers.

Top level domain names are the letters to the right of the "dot". Top level domain names are divided into two categories, general (gTLDs), such as ".com" (indicative de facto world wide, of a U.S.-based company), ".net", ".org" and non-U.S. country top level domains ("ccTLDs") such as ".au" (Australia), ".ca" Canada and ".in" (India).

General top level domain names are supposed to be roughly descriptive, but in practice that has not been the case. See, e.g., www.cantonsportsplex.net. Second level domain names ("SLDs"), to the left of the dot — "McDonalds," of "mcdonalds.com — are mostly where disputes arise.

New gTLDs: What they Mean

New gTLDs have been added to relieve the scarcity of names in the existing gTLDs. Again, they were supposed to be generally descriptive, but for the most part this is left to self-policing. Some of the new gTLDs are sponsored gTLDs, e.g. ".aero" with "sponsors" who are supposed to police them. New gTLD's with little or no restrictions (e.g. .biz) may open up more Internet real estate, but will not address the trademark or cybersquatting issues at all.

How to Register

Clearing the TLD and SLD

The Registrar will require you to "clear" a name, meaning do a search to determine whether anyone else has registered it. Unlike some of the judgment calls required under trademark law, this offers a binary choice — the name is available ... or it's not.

Alternatives - other gTLDs; ccTLDs

If your preferred SLD is taken, a possible alternative is to register one of the new gTLDs, such as .biz or .info. But think twice before using the name of a well-known, well-funded trademark owner. These companies police their trademarks regardless of TLD. In fact, many powerful trademark owners opposed the creation of new gTLDs to avoid having to police their names in yet another venue — but they will!

Another alternative is the country-based, ccTLD. CcTLDs are not as well policed by the large trademark holders and, if they do not have trademark rights in that particular jurisdiction, they will not be as able to demand cancellation or transfer. For years, it was popular to use the ccTLD ".tv", which was based in the island of Tuvalu. This may work with clever suffixes like .tv, but with domain names that are more obviously associated with a particular country, it can make your client seem parochial. Conversely, a ccTLD can create a strong sense of local purpose and pride, which may be in your interest.

Registering

Registration is simple. Just obtain a list of officially sanctioned registrars from ICANN (the Internet Corporation for Assigned Names and Numbers: www.ICANN.org), from WIPO (the World Intellectual Property Association: www.wipo.net) or from the local authorities. You can usually also obtain numerous names from almost any search on the Web. Once at the site of an official registrar, simply follow the instructions.

The entity registering the domain name must provide a contact name and address. This will be available to the public through the registrar on a "Whois" site. It is possible to register the name of your domain name under a third party, but they have to agree to accept responsibility for it.

In most situations it is important that a company register its domain name in its own name and not in the name of its Web developer or director of marketing. When you register a domain name you have to provide contact name and address for billing, administrative, technical and notice purposes. If the Web developer or marketing director does this individually, it could lead to trouble later on if (1) the Web developer goes out of business or (2) the company parts ways with the Web developer or marketing director in a less than friendly manner. The last thing a start-up company needs is to get into a fight over ownership of its domain name.

Registering all Possible Variants

Many companies register not only their own domain name, but also all likely variants of the name, including common misspellings. This can stop people who intend to misdirect traffic from the true company's site (e.g. enter www.goole.com, or www.googl.com. By contrast, try www.gogle.com). The trouble with this, of course, is that it can get very expensive. It requires judgment by both client and counsel to weigh the risks and benefits. When weighing such risks, keep in mind that the domain name dispute resolution processes are always an option, if not a sure option.

To be continued...

Comment: Don't overlook the Internet in your branding! Acquire and protect second level domains just as strategically as you would any trademark or logo.

© ASSOCIATION OF INDEPENDENT GENERAL COUNSEL 2005; (all rights reserved). This article is not intended as legal advice. Consult a qualified attorney for assistance concerning a specific issue or problem.