By Matthew D. Asbell, Partner, Ladas & Parry LLP
As an intellectual property attorney, I frequently advise my clients on acquisition of domain names. The context of such advice is usually after my client learns that a third party has obtained a domain name registration that contains the client’s trademark or some variation thereof. Often, the client will express a sense that it is entitled to the name, and a desire to get it back, only to learn of the many hurdles and potential costs in doing so. In an effort to reduce the frequency of such circumstances where my clients are forced to be reactive at more significant effort and expense, I counsel them on the establishment of a proactive domain name strategy. In developing the strategy, one of my first questions is: who manages the domain name portfolio for the client?
While companies have learned to manage their patent, trademark, and copyright assets within their legal departments, only a small proportion think of domain names in the same way. Instead, they leave management of domains to someone in the marketing or IT departments. This makes some sense when you consider that domains are the addresses on which the marketing team places relevant content, and that the IT personnel are frequently responsible for programming (or overseeing the programming) of the content.
If responsibility for domain name portfolios is going to remain outside of the legal department, IT, marketing, and legal staff must be trained to communicate with each other early and often so that efforts can be coordinated. The company will benefit from guidelines that form the basis for its domain name strategy, and encourage the proactive exchange of information between its employees. The guidelines should cover at least the following key issues:
Chicken or Egg? Domain Name or Trademark?
What prompts the decision to register a domain name? Is the name already used or planned to be used as a brand, a trademark? If so, has the company already applied to register the trademark? Properly trained personnel should know that the mere registration of a domain name does not reserve rights in the name as a trademark, a distinct identifier of the source of goods or services. They should make sure the trademark is available before registering the domain name.
Personnel should weigh the significant costs and efforts to acquire a domain name from a third party, whether through negotiation or litigation, against the usually lower cost of proactively registering the domain. Check availability and decide in advance which domains should be considered important enough to register proactively. Are misspellings and other variations important enough to be registered? You may also want to ensure that the person registering the domains uses a generic company email address for contact information purposes and obtains the registration in the name of the company and not as an individual.
The Internet is Not Just .COM Anymore
When considering domains to register, don’t focus solely on the .com top level domain. In recent years, several hundred new generic top-level domains (gTLDs) have come online. These gTLDscan be proprietary brands themselves, but more commonly, they are keywords that may eventually serve to apportion off sections of the Internet for particular types of commerce or commentary. If your company is providing technology or mobile services, it may want to register names on new top-levels like .tech, .app, or .mobile. You may also need to consider whether it is sufficiently consumer-facing that it should defensively register on top-levels like .sucks and .xxx. Domains relating to countries such as .fr for France, .jp for Japan, .cn for China, known as ccTLDs, are also important if a company has local businesses or wishes to attract local customers in such countries.
Tools to Register, Block, Monitor
Companies can take advantage of tools that allow trademark owners to register their marks in the preliminary “sunrise” period before new gTLDs become available to the public (the Trademark Clearinghouse) or to proactively block others from registering their marks (Domains Protected Marks List). Companies can also monitor efforts by third parties to register similar terms in the legacy gTLDs (ie, .com, .org, .biz, etc), the country-code domains (ie., .us, .uk, .eu, .cn, etc), and new gTLDs through a watch service.
Tools to Acquire Domains from Third Parties
Guidelines should inform personnel of the circumstances in which the company should take action against a third party domain name registration. Common options to consider include litigation or dispute resolution proceedings, anonymous approaches and negotiations to purchase the domain, back-ordering for purposes of registering after expiration, and monitoring of content updates to re-assess options as the third party owner changes the site to which the domain name resolves.
As the Internet matures, companies and their officers should recognize the importance of domain names and coordinate their management with their intellectual property portfolios. Having a clear understanding of which personnel in a corporation are responsible for the domain name portfolio and making efforts to develop a proactive strategy for registering and acquiring, monitoring and enforcing, or otherwise addressing domain names, can ultimately save a company substantial expense and effort.