Internet Domain Names and the interaction with Intellectual Property. Summary

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1 Internet Domain Names and the interaction with Intellectual Property Summary This is the first in a series of articles looking at the interaction between domain names and intellectual property. This article defines and summarises the various types of domain names, how they are registered, the legal effects of registration, the WHOIS databases and, briefly, the interaction between domain names and intellectual property. Subsequent articles will consider the preferential sunrise periods for registration of certain domains by trade mark owners, the various kinds of disputes that arise in relation to domain names, dispute resolution procedures and legal proceedings for registered trade mark infringement and passing off in the UK. Introduction Internet domain names are strings of letters and/or numbers which correspond to the numerical Internet Protocol addresses ( IP addresses ) of computers on the internet. Every computer has a unique IP address and the domain name system ( DNS ) allows domain names to be used instead of IP addresses to access the corresponding websites. Domain names, subject to an exception for internationalised domain names, can consist of the Roman alphabet in upper and lower cases, the numbers 0 to 9, the full stop and the hyphen. They effectively operate as a type of mnemonic, and are invariably easier to remember than IP addresses for example, instead of typing , it is possible by virtue of the DNS to type and to access that website using the domain name internic.net. Internationalised domain names ( IDNs ) - also known as multi-lingual domain names contain characters from outside the standard ASCII character set (a to z, 0 to 9 and the hyphen). These have been mooted for some time so as to enable domain names consisting of, for example, Chinese and Arabic characters. IDNs are available to a limited degree in some countries but not, so far, on a global basis. The different types of domains Domains fall into two categories: generic Top Level Domains ( gtlds ) of three or more characters and country code Top Level Domains ( cctlds ) consisting of two characters. There are a limited number of gtlds. Some of these are reserved for specific classes of organisations and sponsored by organisations which have delegated policy-formulation responsibilities for the gtlds sponsored by them. Brief details are as follows:.aero reserved for the air transport industry, sponsored by Societe Internationale de Telecommunications Aeronautiques, created in 2002;

2 .biz reserved for business use, not sponsored, created in 2001;.cat reserved for the Catalan linguistic and cultural community, sponsored by Fundacio puntcat, created in 2005;.com in theory reserved for commercial organisations but in practice not restricted so.com domains can be registered by any person or organisation, created in 1985;.coop reserved for co-operative organisations, sponsored by Dot Cooperation LLC, created in 2001;.edu reserved for post-secondary educational establishments accredited by an agency on the US Department of Education s list of Nationally Recognized Accrediting Agencies, created in 1985;.gov reserved for the US government and its agencies, created in 1985;.info in theory reserved for information sites but in practice not restricted so.info domains can be registered by any person or organisation, created in 2001;.int reserved for international organisations established by treaties between governments, created in 1988;.jobs reserved for employment-related sites / human resource managers, sponsored by The Society for Human Resource Management, created in 2005;.mil reserved for the US military, created in 1985;.mobi reserved for consumers and providers of mobile products and devices, sponsored by mtld Top Level Domain Ltd, created in 2005;.museum reserved for museums, sponsored by Museum Domain Management Association, created in 2001;.name reserved for individuals and families, not sponsored, created in 2001;.net originally reserved for network infrastructures but can now be registered by any person or organisation, created in 1985;.org originally reserved for organisations which did not clearly fall within the other gtlds but can now be registered by any person or organisation, created in 1985;.pro reserved for certain professions (e.g. doctors, lawyers, accountants), created in 2001;.travel reserved for organisations whose primary activity relates to the travel industry (e.g. travel agents, airlines, hoteliers), sponsored by The Travel Partnership Corporation, created in Of these,.com is by far most popular. As at 12 March 2006, the net total of registered domain names (i.e. existing domains + new registrations expired domains) was 65,408,355 of which 49,733,538 were.com domains. The next largest sub-total was.net at 7,306,957. Between July 1998 and January 2001, approximately 50% of the total registered domains (gtld and cctld) worldwide were registered by US-based registrants followed, and greatly lagging behind, by UK and then Germany-based registrants.

3 The limited number of gtlds is in contrast to cctlds which, as their name suggests, are country specific. There are around 240 or more cctlds ranging from Andorra (.ad) and Ascension Island (.ac) to Monaco (.mc) and Macau (.mo) to Yemen (.ye) and Zimbabwe (.zw). Some of the most memorable are.it for Italy and.tv for Tuvalu simply because they present the opportunity to register domain names such as stop.it / move.it / vampire.tv for example. Other interesting cctlds are.md for Moldova, often used by medical associations and practitioners to indicate their medical status,.as for American Samoa, sometimes used by Norwegian and Danish companies since AS or A/S indicates a joint stock company registered in those countries, and.at for Austria and domain names such as arrive.at. Some countries have strict registration procedures which only allow cctlds to be registered if the proposed registrant has links to that country Canada for example allows registration of.ca domains only if the owner is a Canadian citizen or permanent resident or from a people indigenous to Canada, a legally recognised Canadian organisation, or a foreign resident of Canada who holds a Canadian trade mark. Second level domains are often possible for cctlds. For.uk, some of the most common second level domains are as follows:.co.uk intended for commercial enterprises but in practice,.co.uk domains can be registered by any person or organisation.gov.uk for government agencies only.ltd.uk for limited companies only.me.uk for personal domains and now restricted to natural persons only.org.uk intended for non-commercial organisations but in practice, this is available for registration by any person or organisation Of these and other.uk second level domains, the most popular is.co.uk. It is often the case that UKbased commercial organisations will register their business name or one or more of their trade marks at both the.com gtld level and the.co.uk cctld level but with only one of the corresponding websites being active and the other website diverting to it. For example, a business called Widgets Ltd registers the domain names widgets.com and widgets.co.uk, the operative website is and the inactive website diverts to In this way, Widgets Ltd protects its business name at both the gtld and cctld levels. Regions, as well as countries, can have cctlds and a prime example of this is the.eu domain. This was launched in December 2005 and is reminiscent of the Community Trade Mark ( CTM ), an intellectual property right, in that both cover the European Union. However whilst the CTM no longer

4 has restrictions as to ownership, the.eu domain is available for registration only by organisations which have their registered office, central administration or principal place of business within the EU, organisations established within the EU and natural persons resident within the EU. Perhaps not surprisingly,.eu has been extremely popular and as at 7 November 2006, there were 2,319,400 active.eu domain names. Registration of domain names Domain names can be obtained only by registration at domain name registries. For gtlds, the Internet Corporation for Assigned Names and Numbers ( ICANN ) has accredited various domain name registries and numerous domain name registrars to affect registration. Verisign for example is the ICANN-accredited registrar for.com and.net domains. ICANN is a non-profit corporation responsible for IP address space allocation, protocol identifier assignment, generic and country code Top-Level Domain name system management and root server system management functions. As for cctlds, these also have specific domain name registries (Nominet and EURid for instance are the domain name registries for.uk and.eu respectively) and can be registered via a number of domain name registrars. ICANN does not have authority over cctlds and so these registrars are not ICANN-accredited so far as cctld registration is concerned; they may however offer gtld registration also and to that extent would be accredited by ICANN. In each case and whether registration is at gtld or cctld level, domain name registrars are simply intermediaries between those seeking to register domain names and the domain name registries. Both gtlds and cctlds can also be registered via internet service providers ( ISPs ) who are also intermediaries and effectively resellers. Specific information is required to obtain registration of a domain name as follows: The proposed domain name and the name and address of the registrant The name and address (postal and addresses, telephone and facsimile numbers) of the technical contact. The name and address (postal and addresses, telephone and facsimile numbers) of the administrative contact. The administrative contact is authorised to make changes to and provide any confirmations regarding the domain name including cancelling, suspending and transferring it. This is the case even if the administrative contact is an ISP and so care should be taken when designating an administrative contact.

5 The name and address (postal and addresses, telephone and facsimile numbers) of the billing contact. The IP address of the primary and secondary nameservers. Where a registrant uses an ISP, it is generally possible for the ISP s nameservers to be used for registration purposes and thereafter for the ISP to host the corresponding website via its nameservers. A description of the registrant s status / business where registration is restricted by eligibility requirements. The legal effects of registering a domain name The legal position on registration is considered here for.co.uk and.com domain names in turn..co.uk Nominet, the domain name registry for.uk domains, provides that its Terms and Conditions of Domain Name Registration are automatically incorporated into a contract of registration between it and the registrant when a.uk domain is registered. Notable provisions in the terms and conditions are as follows: Registration entitles the registrant to be a domain name holder that is, to use the domain name for a two year period. The registrant does not, by virtue of registration, become the owner of the domain name and if the latter is not renewed, it becomes available for registration by others. By entering into the contract of registration, the registrant promises that by registering or using the domain name in any way, he / she / it will not infringe the intellectual property rights (for example, trademarks) of anyone else. Also, that he / she / it is entitled to register the domain name and has not registered the domain name in a way that fails to meet with any legal duty of the registrant. By registering the domain name, Nominet do not acknowledge that the registrant has any rights in any words within the domain name nor do they authorise the registrant to use the domain name as part of a business. A domain name is not an item of property and has no owner. It is an entry on our [i.e. Nominet s] register database reflected by our nameservers which we provide as part of this contract. As a result, we will not be bound by, or record on the register, any mortgage-related obligations. This is interesting on a legal basis as domain names can be assigned and the assignments recorded on the domain name register. Domain names are often also trade marks, a form of intellectual property, and these can, like domain names, be assigned and the assignments recorded on the relevant trade marks register. Trade marks however can have security interests such as mortgages registered against

6 them and it is invariably the case that if trade marks are assigned, any corresponding domain name registrations will also be assigned since they are arguably seen as quasiintellectual property. This is because they can in certain situations give rise to enforceable intellectual property rights, specifically, registered trade mark infringement and passing off. This will be considered further below. The registrant agrees to be bound, in the event of a dispute relating to the domain name, by Nominet s Dispute Resolution Service policy ( DRS policy ) and Dispute Resolution Service procedure ( DRS procedure ). These will be considered in the next article in this series. The domain name registration can be cancelled or put into a special status if any of various terms or conditions of registration are breached by the registrant. These include the registrant s promise not to infringe third party intellectual property rights. Cancellation of a domain name registration means that the contract of registration ends, the domain name is deleted and will not work as part of a website or address and it will be made available for registration by others. Putting a domain name registration into a special status means that it is suspended or detagged and so will not work but the registrant will still be listed as the domain name holder..com As for.uk domains, the terms and conditions imposed by ICANN-accredited registrars for registration of gtlds invariably provide that the registrant, by applying to register a domain name, will not infringe or otherwise violate the rights of any third party, is not registering the domain name for an unlawful purpose and will not use the domain name in violation of applicable laws or regulations. They may also provide that the registrant is responsible for determining whether registration or use of the domain name and its foreign language translations infringe or violate third party rights. Agreement to ICANN s Uniform Dispute Resolution Policy ( UDRP ) is automatically incorporated. This will be considered in the next article in this series. It is possible for.com and other gtlds to be assigned subject to the assignee satisfying the eligibility requirements for holding the domain name in question. The periods of registration and renewal for gtlds vary depending on the domain name registrar used and can in each case be between one and ten years at a time.

7 The WHOIS databases Details about domain name registrations, whether gtlds or cctlds, can be obtained from online WHOIS databases. These are created and maintained by domain name registrars and may, in their own right, constitute a form of intellectual property known as database rights. Domain name registrars hold WHOIS details only for those domains which they are able to register and there is therefore no one all-inclusive WHOIS database. This means that it is necessary first to establish the appropriate registrar and then to check specific domain names on that registrar s WHOIS database. The information available on WHOIS databases mirrors the information required to register a domain name as outlined above that is, the registrant s name and address, details of the administrative, technical and billing contacts and the primary and secondary nameservers. For cctlds, it is possible for private individuals to opt out of WHOIS so that the only information available is the registrant s name. Opting out is not possible for gtlds however and if false WHOIS information is given by a registrant, then the domain name registration can be cancelled. So far as registrars and the WHOIS database is concerned, PO box addresses are acceptable contact addresses for registrants of gtlds. These are likely however to be problematic for effecting service of documents in the event of Court proceedings against the registrant in respect of the domain name. Where the registrant of a cctld has opted out of WHOIS and there is a dispute as to the domain name, it is necessary to write to the relevant domain name registrar advising of the dispute in order to obtain the registrant s contact details and pursue legal proceedings or the DRS procedure. The purpose of WHOIS databases has been the subject of some controversy and, it has been argued, may give rise to data privacy concerns where use of the WHOIS look-up service is made for a purpose other than intellectual property and, specifically, trade mark concerns. It is acknowledged however that WHOIS databases do: Make it possible to establish whether a domain name is registered; Identify the person / organisation responsible for a website corresponding to a domain name; Identify the registrant and his / her / its address - this is particularly important for the owners of trade marks who find that their trade marks or close variations of them have been registered by unauthorised third parties such that they wish to initiate legal proceedings or pursue the appropriate dispute resolution procedure; Establish whether the domain name is in a special status.

8 The connection between domain names and intellectual property Intellectual property is an umbrella term for a number of separate legal rights which have the collective aim of protecting innovation and the expression of creative concepts. The most relevant type of intellectual property vis-a-vis domain names are trade marks. These are defined in the Trade Marks Act 1994 as any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. [Trade marks] may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. Trade marks are territorial rights and registration at national / regional offices is advisable to obtain maximum protection. In the UK, registration is at The Patent Office in Newport and for Community Trade Marks covering the 25 European Union countries, registration is at the Office for Harmonisation in the Internal Market ( OHIM ) in Alicante, Spain. Registration is in respect of specific goods or services and gives the registered owner the right to stop others from using, in the course of trade, (a) the same sign for the same goods or services (b) the same or similar sign for similar goods or services such that there is a likelihood of confusion (c) the same or similar sign for similar or dissimilar goods or services where there is a likelihood of association and use of the sign takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark. A third party using a sign which falls within any of (a), (b) or (c) above is liable for registered trade mark infringement and can be the subject of legal proceedings accordingly. Trade marks can also be unregistered and enforceable in the UK under the law of passing off against third parties using the same or similar mark. This requires the trade mark owner to show that he / she / it has goodwill in the trade mark arising through use in the UK, a misrepresentation leading to confusion and resultant damage or a likelihood of damage. Generally speaking, the third party s unauthorised use of the same or similar mark will in itself amount to a misrepresentation and actual use in the UK rather than reputation is required for goodwill to accrue. A broadly comparable law in many other European countries and the United States is unfair competition although this varies from country to country. As mentioned above, trade marks are often registered as domain names both by their owners and by third parties with no rights to them. The potential for unauthorised third party registrations is recognised as registrants are required to confirm that by registering or using the domain name, they will not infringe the intellectual property rights of others. Registration and use of trade marks as domain names by those with no rights to them can amount to actionable registered trade mark

9 infringement and / or passing off and domain names can, arguably, therefore be regarded as quasiintellectual property. Trade mark owners have, for various gtlds, been able to seek registration of domain names corresponding to their trade mark during special sunrise periods ahead of the possible registration by the general public. These will be reviewed in the next article in this series. So too will the dispute resolution procedures (the UDRP for gtlds and Nominet s DRS procedure for.uk domains) these allow trade mark owners to seek cancellation or transfer of domain name registrations based on their registered or unregistered trade mark rights.