However, new variations on the theme have emerged, such as typosquatting. More recently, speculators have generated revenue through the bulk registration of domain names. Such practices present a variety of problems to brand owners.
Privacy issues
Historically, every registrant of a domain name has been obliged to provide their personal details to the registrar and that information became publicly available through ‘Whois’ records. However, those seeking to abuse the system simply provided false information. Registrars were subsequently put under obligation to ensure that the data was accurate. Concerns over data protection have led some registrars to offer not to disclose contact details. For example, Nominet allows consumers to remain partly anonymous by withholding their contact details (consumers are described as those who have registered a domain name for a purpose unconnected with any business, trade or profession). This opt-out is frequently used by those who register contentious domain names or by domain name speculators to make it difficult for trademark owners to enforce their rights.
Another illustration is that the Canadian Internet Regulation Authority (CIRA) recently announced a new policy that will restrict the availability of registrants’ contact details to the public. The move comes despite opposition from intellectual property (IP) owners and will make it difficult to enforce rights without first obtaining a court order.
It is also becoming increasingly common for registrars to offer privacy protection services. The registrant’s personal information is replaced by the name of the registrar, making it impossible for third parties to determine who owns the domain name through a ‘Whois’ search.
The registrars justify the provision of such services as a means to prevent the receipt of spam email. While in theory such protection might be a good idea, it could be accomplished by simply hiding a registrant’s email address while revealing their name and physical address. In practice, such services are used by third parties to hide their identity, presenting yet another hurdle to brand owners seeking to take action against infringements.
Expansion of top-level domains
More and more top-level domains (TLDs) are coming into existence, such as .eu, .mobi, .ca, and .asia. The rules for registration under each new TLD vary, leaving loopholes for those seeking to make a quick profit. Most new TLD launches are accompanied by ‘sunrise periods’, during which only those with existing rights are meant to apply for registration, as was the case when the .eu domain was launched. The launch of the new .asia domain will have a sunrise period split into three sections: government bodies, trademark owners and companies incorporated in
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The increasing number of TLDs means that unless brand owners keep up-to-date with the new extensions, they are risking third parties registering those TLDs. Many IP owners question the need for further TLDs. While it is now easier for brand owners to pursue complaints through forums such as the Uniform Domain Name Dispute Resolution Policy (UDRP), the procedure can be lengthy and relatively expensive. It is often simpler for brand owners to buy the domains from the third parties who have registered first — still a common practice for speculators.
New forms of speculation
Among recent developments are the blackmail techniques adopted by some unscrupulous registration companies or individuals. It is not uncommon for a brand owner to be contacted by someone ostensibly warning them that a third party is trying to register the brand owner’s brands as domain names. The contact offers the brand owner the opportunity to register the domain name(s) first. The offer is accompanied by the thinly-veiled threat that if the brand owner declines to register the domain names through the contact (for a fee), then the third party may do so.
Domain name speculators are also becoming more creative about finding ways to exploit registration rules. In particular, I would highlight three new techniques:
- The rules of the Internet Corporation for Assigned Names and Numbers (ICANN) allow an ‘add grace period’, entitling the registrant of a domain name to get a refund of the registration fee within five days of the registration. Some speculators register large numbers of domain names but only keep those that have the ability to generate significant revenue from click-through advertising during the five-day grace period. The less profitable domain names are rejected at the end of the five-day period and the speculators get a refund for them. This practice is called ‘domain name tasting’.
- A variation on this theme is known as ‘domain name kiting’. After returning a ‘tasted’ domain name within the five-day grace period, a speculator re-registers it. By repeatedly doing so, speculators can own domain names for long periods without paying for them.
- Some commentators have noted the development of a more sinister practice known as ‘domain name spying’. The director of a newly-formed company performs a ‘Whois’ search to check the availability of a domain name. He decides not to register the name there and then, but tries to do so some time later. He then finds that someone else has registered the domain. Coincidence, or a result of spying? Some believe that speculators have developed sophisticated software capable of monitoring ‘Whois’ searches.
It is becoming increasingly difficult for brand owners to police their brands on the internet. The following measures would help protect trademark owners’ rights:
- An open debate about the need to protect individuals’ privacy versus the need for accountability. The aim should be to enable rights owners to have easy access to the contact details of registrants.
- Outlawing, or at least heavily restricting, the availability of ‘privacy protection’ registration services.
- A reduction in the number of TLD launches and the alignment of registration rules ensuring that rights owners can make first claim on relevant domain names.
- The abolition of grace periods when registering domain names.
- Continuous monitoring of brand owners’ domain name portfolios and the adoption of aggressive domain name recovery programs.
Graham Robinson is managing director of IP investigations company Farncombe International.
