Extending Domain Portfolios Around The Globe

Wednesday, February 1, 2006 - 01:00

The Editor interviews Gretchen Olive, Associate General Counsel and Manager of IP Services at Corporation Service Company. Questions about this interview can be addressed to her at golive@cscinfo.com.

Editor: Why is it important for every company to effectively manage its domain portfolio?

Olive: Domain names should be a critical component of every company's strategy for promoting and protecting its brands. Their primary function serves to increase traffic to the company's websites. They also help improve customers' brand recall and recognition.

Proper registration and monitoring help prevent dilution of the company's brands. They also help protect the company from cybersquatting. "Cybersquatting" is the term of art used to describe the registering, trafficking in or using of a domain name with the intent of profiting from the goodwill of someone else's trademark.

Editor: Haven't opportunities for cybersquatters diminished with the enactment of the Anticybersquatting Consumer Protection Act in the U.S. and comparable legislation in other jurisdictions?

Olive: Yes. One factor contributing to the reduced opportunities for cybersquatters has been the success of anti-cybersquatter lawsuits. An even more important factor is that companies are proactively managing their domain portfolios. Most companies today recognize the importance of registering and monitoring their domain names, particularly as organizations extend their reach into international markets.

Editor: How can companies adapt their domain portfolios to better serve international markets?

Olive: Promoting and protecting brands in the 21st century requires monitoring not only generic top-level domain name (gTLD) but also country-code top-level domain name (ccTLD) registrations. The commonly used gTLDs in the U.S. include .com, .net, .org, .biz and .info.

A ccTLD is a domain name that has a country code as its suffix instead of the typical .com, .net or .org extension. For example, a website in the United Kingdom uses the extension .co.uk, while a website in Japan uses .co.jp.

Editor: How can domain name extensions be adapted to specific international markets?

Olive: Many foreign registries make available Internationalized Domain Name (IDN) domain extensions for corporations and individuals to register. IDNs are domain names written in characters other than the Roman alphabet and represent local language characters.

With the Internet's expansion into new markets, the demand for IDNs has grown rapidly. In 2003, 12 percent of IDNs were linked to a website. The percentage has grown to over 30 percent today.

Currently, IDNs can be registered in over 35 languages. Austria, Denmark, Germany, Greece, Norway, Sweden, Hungry, Japan, China, Thailand and South Korea are among the countries in which IDNs can be registered.

Editor: Have countries adopted uniform procedures for registering domain names?

Olive: No. Many countries have their own specific rules with respect to what domain names can be registered. The lack of uniformity among foreign jurisdictions can make the process of registering domain names complex and confusing. Companies can benefit from an expert's assistance in collecting the necessary documentation in order to meet each specific country's requirements. Among our services, we offer email alerts that provide industry news on new country extensions, changing requirements, Internet statistics and more.

Editor: Isn't it expensive to register domain names in multiple jurisdictions?

Olive: Like every item in today's closely scrutinized corporate budgets, the cost of registering domain names should be proactively managed. A strategy of registering a name in all jurisdictions would provide the most protection, but it may be cost prohibitive. Often the best strategy is to protect your top brands and trademarks in all the gTLDs and then select the ccTLD jurisdictions in which you conduct business, have a presence or have plans to enter the market. If your budget allows, you then can purchase domains for second-tier brands and trademarks.

Editor: Can't registration expenses be avoided by waiting to see if someone registers the domain name without authorization and then trying to recover it?

Olive: Recovery of a domain name can be very difficult. Some jurisdictions do not make domain owner records (aka Whois records) available online, making it hard to identify the entity that has misappropriated the domain name. In addition, the administrative dispute procedures for domain name recovery differ among jurisdictions. Many ccTLD jurisdictions do not recognize the Uniform Dispute Resolution Procedure (UDRP) as a recovery mechanism. Even if they use similar protocols, differences in international law do not always make it certain that the outcome will be favorable to a trademark owner.

Editor: How does CSC help companies to recover their domain names if they have been registered by someone else without authorization?

Olive: Our audit services can be requested on an as-needed basis to determine if a company, brand or executive name has been taken as a domain name. CSC does not provide legal advice or services. If a customer calls with a problem that someone has registered a domain name without authorization, our consultative services can help point the customer in the right direction to recover the domain name.

Editor: How has CSC expanded its international domain capabilities?

Olive: CSC recently acquired eBrandSecureSM, LLC, a leading provider of global, corporate domain name management, headquartered in Los Angeles. This acquisition significantly expands CSC's international domain management capabilities and adds DNS services to its Name Management product suite. Both CSC and eBrandSecure corporate customers will now benefit from a comprehensive product line that will include global domain name registration and management, digital certificate issuance and management, and DNS management.

Editor: How do these expanded capabilities help corporations and law firms proactively manage and protect their domain assets as part of their overall intellectual property portfolio?

Olive: CSC believes in a proactive, consultative approach. We offer interactive webinars on a monthly basis covering a variety of topics such as Securing Your Website & Web Presence, The ROI of Brand Protection, and Strategies for Domain Name Recovery.

CSC also offers news alerts on a regular basis, notifying customers of the latest industry trends, issues and opportunities available with CSC as their registrar. The most recent alerts have focused on the new .EU extension, which is believed to become the second largest extension behind .com. Recent alerts have also included recommendations and FAQ's to help our customers through the complex and restrictive sunrise registration processes.

In addition, CSC is about to release an enhanced, online portal that will help customers easily and proactively manage and report on their global domain name portfolio. For more information, visit www.corporatedomains.com.