A primer on domain name selection and protection

January 1, 2015

internet webA domain name is an Internet address that can be used to send and receive information in the online environment.  The domain name system was established as a way to simplify the navigation of the Internet.  However, it also provides companies with an opportunity to establish brand recognition in the context of the Internet and selecting and establishing ownership rights in an appropriate domain name is an important step in building an online business presence.

Once a business registers a domain name, it secures an IP address that can be moved from place to place, an important factor in today’s mobile society. It is similar to establishing a telephone number that can be moved anywhere in the world. A business’s domain name can be used for its Web homepage as well as for e-mail addresses.  The importance of establishing an appropriate domain name is paramount for any business, domestic or global, considering a move to the Internet, and any business contemplating an online presence should move quickly to stake out its claims to an appropriate domain name before it is tied up by another party.

The first step in this process is the selection of an appropriate domain name (§ 129:26) and the completion of registration of that domain name (§§ 129:70 et seq.).  Each domain name is made up of a series of character strings (called “labels”) separated by dots.  Domain names have several levels. The right-most label in a domain name is referred to as its “top-level domain” (TLD).  Each TLD includes many second-level domains (such as “icann” in “www.icann.org”); each second-level domain can include a number of third-level domains (“www” in “www.icann.org”), and so on. The responsibility for operating each TLD (including maintaining a registry of the second-level domains within the TLD) is delegated to a particular organization. These organizations are referred to as “registry operators”, “sponsors”, or simply “delegees.”

A generic top-level domain (gTLD) is a top-level domain used by a particular class of organization. These are three or more letters long and are named for the type of organization they represent (e.g., .com for commercial organizations).  Among the gTLDs created in the past and currently operating are the following:

  • .aero—for the air transport industry;
    .asia—for the Asian community;
    • .biz—for business use;
    • .cat—for Catalan language/culture;
    • .com—for commercial organizations, but unrestricted;
    • .coop—for cooperatives;
    • .edu—for post-secondary educational establishments;
    • .gov—for governments and their agencies in the United States;
    • .info—for informational sites, but unrestricted;
    • .int—for international organizations established by treaty;
    • .jobs—for employment-related sites;
    • .mil—for the U.S. military;
    • .mobi—for sites catering to mobile devices;
    • .museum—for museums;
    • .name—for families and individuals;
    • .net—originally for network infrastructures, now unrestricted;
    • .org—originally for organizations not clearly falling within the other gTLDs, now unrestricted;
    • .pro—for certain professions;
    • .tel—for services involving connections between the telephone network and the Internet;
    • .travel—for travel agents, airlines, hoteliers, tourism bureaus, etc.; and
    • .xxx—pornography.

gTLDs can be subdivided into two types, “sponsored” TLDs (sTLDs) and “unsponsored TLDs (uTLDs)  Generally speaking, an unsponsored TLD operates under policies established by the global Internet community directly through the ICANN process, while a sponsored TLD is a specialized TLD that has a sponsor representing the narrower community that is most affected by the TLD. The sponsor thus carries out delegated policy-formulation responsibilities over many matters concerning the TLD.

The above main top-level domains are U.S. indicators. In other countries, domain names have top levels that end in a two-letter designation for a particular country based on the country’s two-letter ISO 3166 country code abbreviation and, in some cases, a mandatory second-level prefix like “co.” While companies in the U.S. typically did not use a country code when their domain name was displayed internationally, it is possible to obtain a domain name that includes “.us”.

The top-level domains are an integral part of the overall Domain Name System (“DNS”) that has been overseen by the Internet Corporation for Assigned Names and Numbers (“ICANN”).  ICANN now coordinates the Internet Assigned Numbers Authority (“IANA”) functions, which are key technical services critical to the continued operations of the DNS. The IANA functions include: (1) the coordination of the assignment of technical protocol parameters including the management of the address and routing parameter area (ARPA) top-level domain; (2) the administration of certain responsibilities associated with Internet DNS root zone management such as gTLD and country code (ccTLD) top-level domains; (3) the allocation of Internet numbering resources; and (4) other services. ICANN performs the IANA functions under a U.S. Government contract.  The official list of top-level domains is maintained and administered by the IANA and is available for viewing at the IANA website.  Useful guides to domain names can also be downloaded from the ICANN website.

In 2012 the ICANN launched its “new gTLD program” that  allows organizations all around the world to apply for the right to operate their own new gTLD registries using names of their own choosing and offer those systems for use by others on the Web. New gTLDs have been delegated in in a variety of categories such as generic/commerce (.shop), arts and entertainment (.radio), cities and regions (.berlin and.california), brands (.canon) and sports (.bike). Authorization of these new gTLD registries has been controversial, the application process is expensive and due diligence is extensive given that applicants need to demonstrate the technological ability to maintain a registry is order for their application to be successful. The ICANN hopes that this process will enhance openness, innovation and facilitate changes in the ways that people use and search the Web.  Complete information is available on the website that the ICANN maintains specifically on “New Generic Top-Level Domains”.

The “second level” is the name that precedes the top-level domain (e.g., “yourcompany” in yourcompany.com). The second level is similar to a company’s trademark or service mark in the offline world and indicates not only the topic, such as above, but the country in which the domain name was issued. It is possible to register second level identifiers in multiple countries. For example, one can register domain names such as yourcompany.nu with the Kingdom of Niue (a group of islands near New Zealand) or yourcompany.to with Tonga. Other popular countries are “uk” for United Kingdom, “jp” for Japan and “cn” for China.

Domain names, and their corresponding IP addresses, are stored in a database which is maintained on a domain name server (DNS). When a user attempts to make a connection to a Web site, the following occurs: the desired domain name will be entered into a browser; the browser will connect to a DNS in order to obtain the IP address associated with the particular domain name; and the browser will use the IP address to connect to the site.

Companies should consider registering a domain name corresponding to each of its important tradenames and service marks in order to stake out the broadest claims in the Internet marketplace. The issues for companies with respect to protection of domain names are similar to those raised in the trademark area. If a company fails to take action to register and protect its brand name as a trademark, a third party can register and use a domain name which is identical or similar to the company’s name. A company can be prohibited from using a domain name that infringes on registered trademarks or service marks of a third party. Accordingly, it is important that companies put together an effective strategy for protecting their rights in domain names.  Applicants for registration must be prepared to make the following representations: the right to use the requested domain name; the intent to use the domain name on a regular basis and only for lawful purposes; and use of the domain name will not violate the rights of a third party.  If possible, the site owner should also register all combinations of words or letters that a visitor might reasonably enter into a search engine to find the site. This insures that difficulties with spelling or pronunciation will not cause an interested party to miss the site.

Before making an application for a domain name, the records of the Internet Corporation for Assigned Names and Numbers (ICANN) should be searched to determine if the desired name is available. If a company finds that another party has already registered the name, the company may petition the ICANN to halt use of the name if the company believes that it can show that the domain name infringes the company’s registered trademark rights. The ICANN has established policies and procedures for resolving domain name disputes (§ 129:73). As discussed in Electronic Commerce (§ 128:86), courts may also get involved in domain disputes; however, a party seeking to prevent another from using a domain name must be able to show that the domain name is being used for commercial purposes, infringes a famous mark, and dilutes the trade name of the famous mark.

Counsel should determine whether the proposed domain name infringes any trademarks or dilutes any famous marks. In addition to searching trademark registrations and applications on file with the United States Patent and Trademark Office (PTO), common-law trademark rights should be investigated by reviewing: Abandoned registrations and applications; all state trademark registers and trade name listings; and commercial and telephone directories and databases.  Determinations regarding dilution of famous marks require an analysis of several different factors, including distinctiveness and the duration and extent of use of the mark in commerce.  The procedures for conducting trademark searches are further discussed in Trademarks (§ 198:25).

Once the availability of a desirable name has been confirmed, steps should be taken by the site owner and/or its designated agent, such as the developer or host, to make sure that the name is registered. Contemporaneously with any trademark registration (§§ 198:3 et seq.), the proposed domain name should be registered with a domestic domain name registrar (§ 129:72). Consideration also should be given to the need for registration with foreign domain name registrars (§ 129:72).

Ideally, the site owner should take care of registering its desired domain name on its own; however, some development and hosting agreements provide that the developer or the host will handle domain registration for the site owner. Responsibility for domain registration may also be turned over to another outside party other than the developer or host. See specialty form at § 129:182.

If the designer or host is responsible for registering the domain name, the agreement should still provide that the site owner will be listed as the owner of the domain name on the application and the resulting registration. Some hosts have been known to register domain names in their own name to make it more difficult for site owners to change hosts. To avoid this problem, the site owner should request copies of the application materials sent to the registration authority to ensure that it is listed as the registered owner. In addition, the site owner should insist on being listed as the administrative and billing contact to insure that the site owner is the party dealing directly with the domain name registration body with respect to administrative matters relating to the registration. Finally, the agreement should make it clear that the developer/host is only being granted a limited license to use the domain name in the development project or hosting arrangement.

There are a large number of companies that provide relatively inexpensive domain name registration services and also offer various auxiliary services.  Registration services are available for the U.S. and foreign countries and it possible for parties interested in registering domain names in the top-level U.S. domains using characters from foreign languages.

In addition to the technical and legal aspects of selecting domain names, and perfecting and protecting their legal rights therein, companies need to appreciate the goodwill and marketing value of these important identifiers and develop a coherent domain name portfolio management strategy. By adopting such an approach, companies doing business on the Internet—even if simply posting content that directs visitors to more traditional sources of advertising and sales procedures—can be sure that they have the answers to the following fundamental questions:

  • What domain names are actually owned or controlled by the company and when do the rights thereto expire?
  • Have key domain names been registered in the name of an employee or consultant who may cause trouble if a dispute arises with the company?
  • What procedures are in place for monitoring the creation of new domain name extensions, such as “.pro,” “.la,” and “.kids.us”?

Companies that are not in a position to define their domain name portfolio and cease opportunities for expansion will almost certainly reduce their ability to reach new target audiences with their products and company message. Moreover, absent attention to new development, companies may ultimately find themselves being held hostage to “cybersquatters” or third parties that use domain names simply to undermine the goodwill associated with the company’s trademarks. Launching a domain name portfolio management strategy is not difficult, particularly when the company is just starting out. As the business grows, however, the task becomes a bit more complex since more records will need to be reviewed, and the company will be using a broad range of trademarks, products and promotional themes and taglines. In any case, the following steps are recommended:

  • Identify and catalog all of the company’s current domain name registrations. A point person should be designated for this task; and he or she should review company records, send queries to employees and outside service providers, and make formal inquiries to various domain name registrars.
  • Compile a comprehensive list of the current domain name registrations, including the expiration dates, and establish and disseminate a policy that clearly informs all employees that all domain name matters in the future are to go through one designated domain name manager, regardless of whether the issue arises in IT, marketing or elsewhere.
  • Give all registrars a single generic company e-mail address (e.g., domainnames@companyname.com) that can be used for communications regarding domain names to insure that the information is always sent to the appropriate person regardless of who is actually occupying the position. Several people should be given access to this account; however, management responsibility should still be vested in one person at any point in time.
  • Determine which registrations should be maintained in the future and which should be allowed to expire. This is fundamentally a marketing question; and the answer will normally be driven by the amount of Internet traffic traveling to the site, the revenue generated from visitors, and the costs associated with maintaining the registration.
  • Identify any gaps in the domain name portfolio and determine which new names should be registered or acquired (if the name is already owned by another party). The first candidates for this step generally include the company’s most valuable trademarks and foreign registrations in countries where the company actively promotes and sells its goods and services. Recall that registration should probably be pursued for alternative spellings of the desired name and for names that “sound like” the desired name.
  • Identify and adopt a domain registrar that can provide meaningful assistance with portfolio management. Registrars should be able to set auto-renewal for domain names to prevent them from expiring accidentally and should also make it easy to update registration information on the entire portfolio without investing unnecessary time and effort.
  • Gain access, through the domain name registrar or otherwise, to one of the many free services that provide bulletins and other information to keep companies advised of changes in the domain name area, particularly new domain name extensions that will become available in the future. Recall that trademark owners are often able to take advantage of so-called “sunrise” registration periods that allow them to register emerging domain names before they are made available to the general public.

Where the company is interested in acquiring a domain name that has already been registered, and has no legal basis for challenging the registration or simply decides that a legal challenge is not worth the time and effort, establish a domain name monitoring account so that the company can register the desired name as soon as it becomes available.