There are no trademark policemen, so develop your own strategy

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The above headline caught my eye while I was conducting an online search. It was part of a link to a well-known online retailer of domain names, whom many of my clients may have used for their own domain name registration. It brought to mind two issues. Firstly the need to establish clear guidelines preferably backed by a mandatory internal policy governing who may register domain names within a business. Secondly I had a recent discussion with a client whether there is any quick and simple way to prevent people from registering domain names that are too close to his.

Unfortunately, there are no trademark policemen, and I cannot emphasise enough that domain name registries will register any domain name on a first come, first served basis, leaving trademark owners to protect themselves either by court action to restrain infringement, or by bringing formal complaints through the complaint systems operated by most (but not all) domain name registries, or by defensively registering important domain names, (which brings me back to the need for clear internal policy guidelines).

A “registry” is the depository on which domain names are registered and a “registrar” interfaces between the registry and the “registrant” by whom the domain name is registered. Internet Corporation for Assigned Names (ICANN, which is not a Government body but a private US corporation) effectively oversees the domain name system and formerly was the registry for “generic Top Level Domains” (gTLD), including what are regarded as “international” domain names (com, org, net and so on) and oversees the introduction of most other registries. Nominet (also not a government body but a UK company limited by guarantee whose Policy Advisory Board I chaired until that Board was disbanded in 2010) handles domain names specific to the UK (co.uk, org.uk, me.uk and now .uk itself). These are called ccTLD (country code Top Level Domains). Most registries have a complaints system of which ICANN’s own Uniform Domain-Name Dispute-Resolution Policy (UDRP) is best known, and others have their own complaints system often but not always derived from or based on the ICANN original. (The Nominet system, which was written back in 1999, when I first joined the Policy Advisory Board, has several significant deviations from the ICANN system).

As the internet system develops (there are now more than a thousand “internet extensions” or suffixes) some programmes have also been developed to facilitate protection of brand names. These mainly focus on defensive registration of brands in the new extensions. Often, there is called a “sunrise period” before a new extension is introduced during which brand owners may have first call on new domain name registrations corresponding to their trademark. At one time trademark owners had to prove ownership of the trademark as a part of the sunrise process. Now, a body called the “Trademark Clearinghouse” has been set up. This is a centralized database of verified trademarks, which is to be connected to all new Top Level Domains (TLDs) that will be launched.

Getting a trademark validated by the Clearinghouse provides three levels of “protection”. Firstly, it gives access to the “sunrise period” of the new TLDs, and the sunrise period gives priority in registration of the domain name corresponding to the verified trademark. Sometimes, having a trademark in the Clearinghouse is a condition of being able to register the corresponding domain name during the sunrise period. Secondly, when someone applies to register a domain name that matches the trademark record in the Clearinghouse, that person will be informed of the trademark rights and required to acknowledge those rights before completing registration. Thirdly, when the domain in question is registered, the trademark owner will then be notified of the fact but it is then for the trademark owner to take such action as seems appropriate.

A domain name strategy should not only cover dealing with cyber squatters and the like infringers but should also cover internal affairs relating to registration and ownership of domain names:

(i) who within the company may authorise adoption and registration of a domain name (registration on an ad hoc basis and subsequent maintenance can incur significant costs if left unchecked);
(ii) by whom should domain names be registered (it is best to nominate a single point of contact to deal with all formalities rather than permit haphazard registration which may result in loss of rights if the original point of contact leaves)
(iii) in whose name must domain names be registered (my preference is for this to be in the name of the parent company, or the main operating subsidiary; it should not of course be in the name of the employee who happened to complete the online application form);
(iv) how and by whom should requests by distributors to register domain names be handled (there should be a clear policy concerning whether distributors – or even subsidiaries which might part company with the parent – should even be allowed to own domain names; my preference is for the parent or main operating subsidiary to own all domain names whenever legally possible – they can readily be pointed to any website; any deviation should in my view be the exception and be covered by fireproof agreements)
(v) how should ownership and registration of “restricted” domain names be handled (e.g. those for which a residency or nationality qualification is necessary). In this regard it is particularly relevant (in view of Brexit) that an eu domain may only be owned by a national of, or by someone having residence in, an EU member state. It is often possible to have a trustworthy source hold these in trust, subject of course to appropriate agreements.
(vi) These guidelines should be circulated to all staff to whom it should be stressed that they represent company policy to be followed except by specific written consent of the person named at (i). This should make it much easier to prove that any employee acting outside the guidelines did so in bad faith (an essential element in any ICANN or ICANN derived UDRP Complaint).

It is particularly important that those authorised under point (ii) to register the domains be required to maintain a list or register of (i) the domain names registered, (ii) the identity and website url of the registrar (123.reg, 1and1, or whoever) through whom the domains have been registered, (iii) a record of email addresses and other contact details used for each domain name registration, and (iv) most importantly, the passwords and any other information needed to gain access to any domain name “dashboard” enabling details of the domains to be altered. This list must be shared with an appropriately senior member of staff.

Eric Ramage, who is ‘of Counsel’ in Edwin Coe’s Intellectual Property team, is a Chartered Trade Mark Attorney, who was invited to join Nominet’s Policy Advisory Board in 1999 and who subsequently chaired it until 2010, following which he was shortlisted as a candidate for ICANN’s board of directors. He lectures and tutors on domain name recovery on the Nottingham Law School certificate in professional trade mark practice.

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