The management of domain names and metatags within a company Cyprus – Nicosia October, 2003

1. 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@ulys.net http://www.ulys.net http://www.droit-technologie.org

2. Table of content Before the registration of the website Registration of a website Using a domain name 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) 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 <microsoft.com> and also <micro-soft.com>

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

11. I-C Choosing Metatags (1/3) No registration. Fair purposes : cross-references, comparative commercials, group of companies, … 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) 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) 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 ?).

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 Which verifications ? WHOIS? Database ccTLD’s particular rules

17. I-E Verifications prior to registration 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 Registrant : the company (not employee, ISP or even CEO); Administrative contact : operational power; qualified employee; 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 andeverlasting, independently from the physicalperson 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

21. II-C The allocation of a DN gTLDSs (.com, .org, .net,…): normally « first come, first serve ». By exception: particular conditions (Ex: <.museum>, <.aero>. 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) Defensive registration: register a DN without using it.

25. 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.)

26. IV. ENFORCEMENT ISSUES

27. IV-A Monitoring Necessary if DN are considered as assets Often outsourced to a specialized provider / Law firm 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 registeredand/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 ownerfrom reflecting the mark, provided that the registrant has engaged in a pattern of such conduct ; The domain name was registered primarily for the purpose ofdisrupting the business of a competitor ; The domain name was registered with the intention to gainInternet 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 & CommentsEtienne Wéry,Attorney - Brussels and Paris barsSenior Lecturer « Université Paris I (Sorbonne) »etienne.wery@ulys.nethttp://www.ulys.nethttp://www.droit-technologie.org