DOMAIN NAMES
A CORPORATE INTELLECTUAL PROPERTY PERSPECTIVE

Domain Names are the unique indicators on the indices for the Internet which identify the address of the home page of any given address. When a domain name is used on an internet, it is translated into numbers known as IP addresses by a series of computers known as domain name servers which enable location on the network of the particular computer site sought.

There are two different types of domain names:

• the general top level domain name (“gtld”) such as the .com, .org and the .net and
• country code top level domain name (“cctld”) such as .nl, .fr and the .com.au

Why are domain names so contentious:

Certain aspects of domain name registrations make domain names fertile ground for trade mark disputes:-

• Domain names are commonly perceived as property since they can function as indications of origin and can contain trade marks which are of course, property. In this regard, the general law of intellectual property ,may prevent certain domain names being used or dealt with in certain ways.
• It is possible for 3 rd parties to register a well known name with which they are not otherwise connected, preventing the owner of the goodwill in that name from registering it because broadly, the system is first come first served.
• It is possible for 2 companies to have the same second level subdomain but a different top level domain eg. Philips.co.uk and philips.com could be owned by two different companies. The same subdomain “philips” could also be registered with any other cctld such as philips.lu ( Luxembourg ) and owned by different parties in different countries. In practice few companies will be prepared to register their names in all registries around the world (over 240 in number) and may not be eligible under local rules. However, because the internet is truly international, it may be possible for well-known domain names to be registered by 3 rd partes in unusual countries where the well known company does not have a registration and then used worldwide. For example, philips.is could be registered in Iceland , but used everywhere. This could be particularly troublesome if the same goods and services were sold by the newcomer or if the trademark was so distinctive that a perceived connection with the trade mark owner is likely, whatever the newcomer's business.
• Because each domain name is unique, there is no capacity for two companies who normally trade with the same name in different fields to use exactly the same domain name. In the trade mark system this is overcome by a system which allows registration in different classes of goods and services, allowing companies with the exact trade mark to exist side by side. This is not possible in the existing domain anme registration system.
• The general practice of the registries is not to prescreen applications except to ensure that exactly the same domain name is not allocated twice. Accordingly, the lookalike names (phillips.com), soundalike names (filips.com) and names incorporating a mark or trade name (philipsmonitor.com) are easily registered. This would not prevented even if Philips had registered “philips” in every top level domain worldwide.
• Seemingly innocuous names, perhaps attractive to registrants or the result of a typographical error such as the real life example “phillips.com” can be pointed at competitors' sites.

Cybersquatting:-

Stockpiling internet domain names comprising of famous brands, purely for the purpose of selling them is what is termed the act of “cybersquatting”.

Uniform Dipsute Resolution Policy (“UDRP”):-

This new dispute resolution procedure was introduced in December 1999 for all global top level domain names, by the Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit sector corporation. ICANN is recognized by the US government, to co-ordinate amongst other things, the technical management of the internet's domain name system and the allocation of the IP address space. This means that ICANN governs the global top level domain names, namely .com, .net, .org. ICANN introduced its UDRP ( at www.icann.org ) to provide an alternative to court proceedings in relation to abusive registrations of domain names in these top level domains.

Bringing a claim under the UDRP:-

In order to bring a successful complaint under the UDRP system, the complainant must establish three matters:-

• That the respondent's domain names is identical or confusingly similar to a trade mark in which the complainant has rights;
• That the respondent has no right or legitimate interest in respect of the domain name: and
• That the domain name has been registered and is being used in bad faith

ICANN has appointed 4 separate dispute resolution providers to arbitrate these cases brought under the UDRP:-

• CPR Institute for Dispute Resolution
• EResolution
• The National Arbitration Forum
• The World International Property Organization (WIPO) - Philips CIP uses this provider for all this complaints

To date, more than 600 decisions affecting more than a thousand domain names have been issued by ICANN arbitrators applying standards set out in the UDRP. Because it appears that the provisions of the UDRP has been interpreted justly, the UDRP is proving to be a powerful weapon against cybersquatters. To date, Philips CIP has submitted 15 Complaints to WIPO.

Conclusion

The decisions rendered thus far appear to show that the UDRP is being interpreted in a way to effectuate the intent of ICANN. The goal was to allow trademark holders recourse against cybersquatters.

In light of the above, Philips Corporate Intellectual Property has implemented its domain name policy from a trademark perspective. Although the policy is based primarily on the protection of the “Philips” mark, it should also apply to all trademarks owned by the Philips Group.

In short, only time and more decisions will provide greater illumination as to how provisions of both the UDRP and our domain name policy should be construed.