IP Issues Related to Internet Domain Names

The choice of a domain name has become an important business decision. A domain name is registered by you to enable Internet users to locate your company's site on the web.

Company domain names may be registered in any number of "top level domains" called "TLDs". You can choose from the "generic top level domains" ("gTLDs"), such as .com, .net, .org and .info. Or you can choose from the specialized and restricted top level domains if you qualify (e.g. .aero for air travel and transport businesses, or .biz for commercial enterprises). You can also register your domain name under a "country code top level domain" ("ccTLD"), for example, .bn for Bulgaria, .cn for China, .ch for Switzerland.

The technical management of the domain name system is in the hands of the Internet Corporation for Assigned Names and Numbers ("ICANN"). However, in the gTLDs, the registrations themselves are handled by a number of Internet registrars accredited by ICANN, that can be found at ICANN's site at http://www.icann.org. You can also check whether a domain name has already been registered, either by searching via a registrar's site, or by using a 'Whois' search, like that offererd by UWhois, at http://www.uwhois.com. For registrations in the ccTLDs, you will need to contact the registration authority designated for each ccTLD. To do this, you can consult a ccTLD database set up by WIPO, that links to the web sites of 243 ccTLDs, where you can find information about their registration agreement, Whois service and dispute resolution procedures.

When you choose your company's domain name, depending on where you register, you may pick a generic or common name, but if you pick a name that is distinctive, users may more easily be able to remember and search for it. Ideally, it could also be distinctive enough to be protected under trademark law, because domain names can be protected as trademarks in some countries. If you picked a very common domain name (e.g. "Good Software"), your company could have difficulty in building up any special reputation or good will in this name and more difficulty in preventing others from using your name in competition.

You should pick a domain name that is not the trademark of another company, particularly a well-known trademark. This is because most laws treat registration of another person's trademark as a domain name as trademark infringement, also known as 'cybersquatting', and your SME might have to transfer or cancel the domain name, and also pay damages. Also, all domain names registered in the gTLDs like .com, as well as many registered in the ccTLDs, are subject to a dispute resolution procedure (described below) that allows a trademark or service mark owner to stop the cybersquatting of their trademark. There are various databases that you can search on the web to determine if your choice of domain name is a registered trademark in a particular country. WIPO has established a Trademark Database Portal (at http://ecommerce.wipo.int/databases/trademark/index.html) to help you do this search.

If you find that someone else is using your trademark or service mark as a domain name, what can you do? Some unscrupulous people have made a practice of cybersquatting, usually to extract money from the rightful owner of the name or to mislead or confuse consumers. If you find that your trademark or service mark is being cybersquatted, there is a simple online procedure you can go through where an independent expert will decide whether the domain name should be returned to you, and the registrars are required to follow this decision. This Uniform Administrative Dispute Resolution Policy ("UDRP") was first recommended by WIPO as a result of its Internet Domain Name Processes and then adopted by ICANN, and you can find information about it at WIPO's site at http://arbiter.wipo.int/domains/.

In addition to trademarks, it is wise to avoid domain names that include certain other controversial words such as geographical terms (e.g. Champagne, Beaujolais), names of famous people, generic drug names, names of international organizations, and trade names (e.g. name of another person's business), that might interfere with the rights of others or international systems of protection.

For More Information

On domain names generally, see:

On cybersquatting and remedies for cybersquatting, see:

WIPO Arbitration and Mediation Center - domain name dispute resolution (http://arbiter.wipo.int/domains/index.html)

Uniform Administrative Dispute Resolution Policy and Procedure (http://www.icann.org/udrp/udrp.htm)

On domain names and categories to avoid, see:

WIPO's 1st and 2nd Internet Domain Name Process Reports (http://wipo2.wipo.int/process2/index.html)

On ICANN and domain names generally, see:

Internet Corporation for Assigned Names and Numbers (ICANN) (http://www.icann.org)

On trademarks, see: