Think Local, Act Global

Domain names can be registered in most jurisdictions in a matter of seconds, with little proof needed that the registrant is either who they say they are or that they have the intellectual property rights related to the domain name they have registered. It is no coincidence that the most popular TLDs, whether they be generic or country codes, tend to be those which have little or no registration requirements and are priced as cheap as possible.

For those bad actors out there whose only objective in terms of domain registrations is to profit from someone else’s hard work and IP, or to launch their malicious schemes, why would they pay more than the minimum or register in a TLD that requires a fair amount of hoop-jumping.

This is why it is important for any organisation to have a clear domain name strategy that not only defines the key geographies, and thus ccTLDs they need to have registrations in, as well as what IP protection mechanisms they have to provide defensive cover elsewhere.

There are very few uniform global rules when it comes to intellectual property and digital assets. Even in some countries where there are clear breaches of international and local laws, it can be difficult to get domain names suspended and removed. But it is important to have a strategy for those regions which are most important to an organization as well as an understanding of what mechanisms are available to combat any localized infringements and abuse.

Whilst Uniform Dispute Resolution Policy (UDRP) was introduced in 1999 after consultation with the World Intellectual Property Organization (WIPO) to combat abusive registrations in gTLDs, country code Top Level Domains were and still can implement their own policies to deal with domain abuse and infringement.  Examples of some ccTLDs that have adopted UDRP as their dispute mechanism include .CO, .ME, .PA and .TV.

However, in other regions, the rules may very well be different and it is therefore important that organizations understand the nuances so that they can create localised IP strategies to left being out of pocket and red-faced should any infringements happen. This is the concept of building in local knowledge and actions within a global brand protection policy.

The German ccTLD has over 17 million domain names registered, the greatest number in Europe. It is not necessary to have a registered office in Germany to register a .DE domain name but you are required to have one domain contact within the country. However, any infringement claims cannot be made to DENIC, the authority that looks after the .DE ccTLD.  Whilst DENIC can place a restriction on a domain name that is potentially being used in an abusive manner from being modified or transferred, any disputes must be taken through a court to determine the outcome. Only then will DENIC act.

The importance of having domain names registered to trademarks and vice-versa in key geographies is paramount. Many ccTLDs will only consider any domain dispute cases if there is a trademark already registered and evidence of bad faith usage of the name. Therefore, aligning a trademark policy with the domain name portfolio is an important step in the development of a global intellectual property defensive policy.

Working with enforcement experts, such as Com Laude is key for any organisation today. We know the local rules and have worked with many of our clients in handling enforcement cases across the world. Having that expert knowledge and the interpretation of the local domain name rules is often the tipping point between successfully protecting an organisation’s intellectual property and having to deal with the threat of third parties profiting from your hard work.

Fortunately, in many instances taking formal action against a domain name in dispute is rarely required.  Our team of domain name and enforcement experts use their experience in dealing with all scenarios and will understand the most effective approach, whether that is through a shrewd, no-nonsense dialogue with registrants or simple commercial negotiation.

In part three of our series looking at  Brand Protection strategies, we will focus on Rights Protection Mechanisms (RPMs) and how they can be deployed to great effect to combat cyber and typosquatting.