Commercial practices in the domain name business can lead to small web entities losing their domain names. Here, we consider some of the options that such entities may consider to recover the domain name at issue, and offer recommendations for avoiding such issues, in particular based on trade mark registrations.
In the economy of the 21st century, domain names can be vastly valuable, representing much of the goodwill and brand recognition that many businesses are built on. It is not readily apparent to all domain name registrants that they do not, in fact own the domain names they have registered, and this can easily lead to disaster.
Domain names registrations are recorded in one of the top level domain registry run by IANA (Internet Assigned Numbers Authority), a department of ICANN (Internet Corporation for Assigned Names and Numbers) a US-based nonprofit organisation. The management of some registries such as country code top-level domains like.fr or .co.uk is delegated to local trustees such as AFNIC (Association Française pour le Nommage Internet en Coopération) in France or Nominet in the UK. Domain names are usually registered with the domain name registry on behalf of a registrant by a registrar corporation. Registrar corporations register a domain name at a registrant’s request for a periodic fee and if this fee is not paid in any given period, the registrar will allow the registration to expire. Typically, registrars will allow the registrant a grace period in which the registration can be recovered for a number of days after the payment was due, followed by a further redemption period during which recovery is still possible with a penalty fee. Finally, there is a short period during which the original registrant have definitively forfeited the domain name, but the name remains unavailable to third parties, until at last the domain name is finally deleted from the registry and available for registration by the first comer.
Regularly domain names are abandoned that may be attractive to third parties, and at the moment such names become available, there may be a race to grab the name. Indeed, the residual value in expired domain names is the basis of a business in its own right known as "domain tasting", domains are registered for a the five-day trial period during which registration fees can be refunded, on the basis that advertising revenue from visitors looking for the old site will generate sufficient income to justify the exercise. The practice of grabbing an attractive domain name the instant it becomes available is known as "getting in on the drop", and a number of services have arisen to service this market. Specifically, Snapnames.com, Enom.com, and Pool.com all offer services to help new registrants identify domains that may soon expire, and to grab them the moment they become available. In this context, an attractive domain name may be any domain name attracting a significant number of visits, regardless of any meaning in the name.
This system runs on the basis that there are no property rights in domain names as such, and that the registrant’s rights end as soon as they stop paying a registrar to keep their registration in place. In view of the great importance that domain names have in society, this system can often lead to tensions between registrants and others who feel that have some interest of their own in the domain name. Cybersquatting is a well known example of such tensions, where a domain name is registered by a party having no legitimate interest in a domain name, with a view to selling the domain name to a party who does have an interest, for a profit. As this practice became infamous in the early days of the internet, ICANN developed the UDRP (Uniform Domain-Name Dispute-Resolution Policy) process to provide for the reassignment of such misappropriated domain names.
Accordingly, the registrant of an active domain name who inadvertently allows their registration to expire may very well find that it has been registered by some unknown third party, perhaps merely to harvest advertising revenue from visitors unaware of the change of registrant, and see no obvious way to recover their registration. This is one reason why it is advisable to consider of the inexpensive automatic renewal features proposed by most domain name registrars. Although court proceedings are generally more flexible in terms of the situations they can consider and the remedies they can impose, such proceedings can involve open-ended, unpredictable and often substantial costs, which is generally dissuasive for small businesses and other entities. Alternative dispute resolutions processes such as the UDRP process are thus an attractive alternative. However, it quickly becomes clear that the UDRP process is primarily intended for owners of registered trade marks in the domain name at issue. Specifically, the UDRP process assesses three factors: that
- the domain name at issue is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
- the current]registrant does not have any rights or legitimate interests in the domain name; and
- the domain name has been registered and the domain name is being used in "bad faith".
The web manager of a small business, NGO or association might be tempted to lose hope at the mention of trade marks. However, it should be borne in mind here that the UDRP’s background is in US law, and that a trade mark is not necessarily a registered trade mark – the only type of trade mark in many civil law jurisdictions – it may also take the form of an unregistered trade mark or passing off right as known in common law jurisdictions. In this regard, the WIPO Arbitration and Mediation Center has summarised the consensus of UDRP panels on this point as considering that “the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trade mark, the nature and extent of advertising, consumer surveys and media recognition.” These remarks may appear to suggest that unregistered rights are reserved for large businesses. However, the WIPO summary goes on to state that “the fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trade mark.” Furthermore, as mentioned above, the very concept of an unregistered trade mark right is unfamiliar in many civil law jurisdictions. However, the WIPO commentary goes onto confirm that “for a number of reasons, including the nature of the internet, the availability of trade mark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction.”
It might be argued that any domain name with sufficient residual traffic after expiry to justify re-registration by a third party could potentially benefit from rights as an unregistered trade mark, and as such be a candidate for return to its previous registrant on the basis of the above principles.
It must further be noted that while the UDRP mechanism is applied directly to second level domains associated with generic top level domains (.com, .org, etc), country code top level domains (.fr, .uk) generally have the responsibility for managing disputes relating to their ccTLDs, and may apply variants of UDRP which may have their own flavours as dictated by local laws or legal thinking.
In France for example, the PARL EXPERT and SYRELI mechanisms administered by the AFNIC apply the rules defined in Article L45-2 of the ‘Postal and electronic communications code’, which state that a domain name may be deleted if it
- is likely to disrupt public order or violate principles of morality, or infringe any rights protected by the French Constitution or by French law; or
- is likely to infringe IP rights or personality rights, unless the domain name holder has a legitimate interest in the domain name and is acting in good faith; or
- is identical or similar to the name of the French Republic, of a local authority or group of local authorities, of a local or national institution or public service, unless the domain name holder has a legitimate interest in the domain name and is acting in good faith.
This text only mentions “IP rights and personality rights”, and since the usual approach in France is to consider “intellectual property rights” to mean those rights defined in the French Intellectual Property Code, this may be taken to suggest that unregistered trade marks are not a valid basis for cancellation of a domain name. Indeed, unregistered rights generally are not well established in France. Possible exceptions include the protection afforded to “well-known trade marks” under the Paris Convention and/or TRIPS, or unregistered Community Designs, although both of these have their own peculiarities which will limit their usefulness in the present context. This seems to be borne out by review of the AFNIC published decisions, in which case a number of requests are rejected for a lack of a suitable IP right (Atable.fr, Dotip.fr), although in neither case was any attempt made to argue the subsistence of any unregistered IP right. Indeed, certain decisions (FEVEM, ldesign) suggest no IP right to subsist in the case of the registered name of the company, which in other contexts might be afforded some degree of protection. In any case the level of proof required to satisfy the AFNIC criteria is such that the prospects of success are poor in anything but cut and dried cases.
As such, the degree of protection for right owners through alternative dispute resolution procedures depends on the top level domain in question, and the body administering it.
On this basis, it can be recommended for example that any organisation doing significant business in France would be well advised to obtain a French or EU trade mark, or Madrid registration designating France, even for the sole purpose of securing rights to the corresponding .fr domain name. If this is undesirable or impossible for some reason, it may be preferable to focus on generic top level domain names (.com etc) for which broader rights may be applicable in dispute resolution processes.
Owners of a registered trade mark are furthermore able to make use of the ICANN Trademark Clearinghouse mechanism, through which trade marks can be recorded so give trade mark owners preferential access to domains related to their marks when new top level domains become available. Furthermore, the registrar for certain TLDs, Donuts inc, offers a Domain Protected Marks List (DPML) service, whereby attempts to register second level domains corresponding to a mark on the list are automatically blocked.