‘Largest’ cybersquatting judgement

Verizon, an Internet company, recently issued a statement stating that it had been granted a $33.5 million cybersquatting judgement (equally $50,000 per domain name) against OnlineNIC, a domain name registrar.

Verizon had filed a lawsuit against OnlineNIC in a US Federal Court, claiming OnlineNIC had registered 663 domain names incorporating its trade mark VERIZON causing confusion amongst end users searching for Verizon.

Verizon stated: “This case should send a clear message and serve to deter cybersquatters who continue to run businesses for the primary purpose of misleading consumers. Verizon intends to continue to take all steps necessary to protect our brand and consumers from Internet frauds and abuses.”

This judgement will be welcomed by the Intellectual Property community and is a small step towards reigning in the ever increasing practice of cybersquatting.

For assistance with domain name disputes email info@lexsynergy.com.

Giving Back

Lexsynergy recently launched a scholarship programme for disadvantaged South Africans.

In 2009 the scholarship will cover 50% of the school fees for two young girls to study at Wendywood High School, located in Johannesburg.

We aim to raise enough money to cover the remaining 50% and hopefully offer more scholarships to students in need.

A small donation will go a long way to change the lives of the students that will benefit from the scholarship programme. We have created a face book page, which we encourage you to join.

If you wish to make a donation please email info@lexsynergy.com. Also visit and join us on Facebook.

We wish all our readers well over the festive season and a happy new year.

CO.ZA squatting

The South African Institute of Intellectual Property Law (SAIIPL) is one of the accredited dispute resolution providers that adjudicate on co.za (South African commercial Top Level Domain) domain name disputes.

Since June 2007 there have been 24 decisions, which seem to be fairly consistent with the decisions from WIPO and the National Arbitration Forum. To view the decisions visit http://www.domaindisputes.co.za/content.php?tag=6.

There are currently more than 466 000 co.za domain names which are registered on a "first come, first served" basis making it a prime "new" target for cybersquatters and typosquatters (domain name profiteers) to expand their business of online infringements. See some of the examples we found: http://www.facebook.co.za/ (whois) and kawasaki.co.za (whois).

As the popular domain extensions become more saturated with domain name profiteers, the infringements will move to domain name markets such as co.za increasing the number of cases that will be brought before the SAIIPL or similar dispute resolution providers.

A defensive domain name registration is the best option for trade mark owners to ensure brand protection within the open and unrestricted TLDs.

To check the availability of your brand / trade mark search the co.za whois at http://www.lexsynergy.com/.

.Tel Launch Countdown

The new gTLD .tel will launch on 3 December 2008.

From the launch date until 2 February 2009 trade mark owners will be given priority to register their trade marks as a .tel domain name (Sunrise Period).

The Sunrise Period will operate on a first come, first served basis. This means that the sooner an application is submitted the greater the chance of securing the domain name.

The applicants trade mark must have been applied for before 30 May 2008 and registered prior to 3 December 2008.

Lexsynergy is now accepting .tel applications.

Lexsynergy In Kenya

What do Barack Obama and Lexsynergy have in common?

Both have a presence in Kenya! Visit www.domainnames.co.ke

Lexsynergy recently opened its Kenyan office that will focus on promoting Kenyan domain names locally and internationally.

Lexsynergy is accredited with KENIC (Kenya Network Information Centre) the registry which manages and operates the .ke TLD (Top Level Domain).

The following Kenyan sub-domains can be registered:

co.ke - Companies
or.ke - Non-Profit Organizations
ne.ke - Network Devices
ac.ke - Institutions of Higher Education
sc.ke - Schools
go.ke - Government

The growth of the ICT sector in Kenya together with improved enforcement of Intellectual Property Rights in that country has increased the importance of .ke TLD registrations. Trade mark owners are encouraged to take a pro-active step by extending their protection to the Internet, in Kenya, by securing their brands / trade marks as a .ke domain name.

Email info@domainnames.co.ke if you have any questions regarding Kenyan domain names.

Domain Name Dispute Resource

We are sure that most lawyers will welcome the new domain name dispute search engine Domain Fight. It allows users to search for WIPO and NAF decisions from one location.

Warning: Fraud Emails

If you receive emails like the one below, even if seeming legitimate, rather log in to your domain name provider account by entering the URL in the browser yourself.

Dear Network SolutionsŽ Customer,

On Fri, 31 Oct 2008 10:57:40 +0200 we received a third party complaint of invalid domain contact information in the Whois database for this domain Whenever we receive a complaint, we are required by ICANN regulations to initiate an investigation as to whether the contact data displaying in the Whois database is valid data or not. If we find that there is invalid or missing data, we contact both the registrant and the account holder and inform them to update the information.

Please note: ICANN (the Internet Corporation for Assigned Names and Numbers) regulations state that the WHOIS Administrative Contact may initiate and approve domain name registration transfers from your Network Solutions account to other Registrars. If you are not listed as the WHOIS Administrative Contact a transfer can occur without your knowledge if Domain Protect is not enabled for the domain name registrations listed above.

To change the WHOIS Administrative Contact Information for any of your domains, please login to Account Manager:

1. Log in to Account Manager at: http://www.networksolutions.com.
2. Click on the "Profile & Accounts" tab in the left navigation menu to be taken to a page listing your account details.
3. Click on "Accounts" and select the account you wish to edit.
4. Click "View/Edit WHOIS Contacts" to make your updates.

If you believe someone requested this change without your consent, please contact Customer Service.

If you would like to order additional services or to update your account, please visit us online.

Thank you for choosing Network Solutions. We are committed to providing you with the solutions, services, and support to help you succeed online.

Sincerely,
Network SolutionsŽ Customer Support

Si of relief

In a previous post we said the following on the restrictive nature of some ccTLDs:

"If these ccTLD operators do not relax certain restrictions it could stifle Internet investment resulting in the loss of a potentially lucrative revenue stream for those countries as well as potentially being ignored by the Internet community when the new gTLDs are released.

We believe the IP community needs to debate domain name issues more actively to encourage registries to change restrictive policies."

We now learn that on 6 November 2008 the Slovenian registry (ARNES) will relax its registration rules.

These new rules will remove the current restrictions and allow anyone to register .si domain names (including foreign companies and persons). There will also be no restriction on the number of domains that may be registered by registrant.

We would like to believe that our post was instrumental in bringing about this change but nevertheless we welcome this move by ARNES and encourage other ccTLD operators to follow a similar route.

Do Tel

The new Top Level Domain .tel will be launched on 3 December 2008 by the registry Telnic Limited (www.telnic.org).

.tel will allow businesses and individuals to communicate their contact information to clients and potential clients without the need of designing, hosting or managing a website. The registrant’s contact information and keywords will be stored directly in the DNS. The purpose of .tel is to provide a simple yet effective way of displaying contact information to Internet users.

Lexsynergy will start accepting applications for the Sunrise Period on 1 October 2008.

.tel will be launched in 3 separate Periods.

Sunrise Period - 3 Dec 08 - 2 Feb 09 (Trade mark holders)
Landrush Period - 3 Feb 09 - 23 March 09 (General Public at a Premium Price)
General Availability Period - 24 March 2009 - onwards (General Public)

You can obtain a complete summary guide to the .tel launch periods by emailing domain@lexsynergy.com.

Domain Names Missing the Point

Typosquatting has moved to centre stage in the domain name industry. Typosquatting is the practice of registering domain names that are misspellings or likely typographical errors of heavily trafficked sites or well-known trade marks. These domain names are then used to generate pay per click revenue, through an affiliate marketing website, from internet surfers who accidentally mistype a domain name.

Affiliate marketing is a performance based internet marketing program in which affiliates are paid for sending customers or traffic to a website. Affiliate programs are driven by affiliate marketing software which tracks and logs commission for promoting the partner's website.

So is there in money in typosquatting? Yes and plenty of it. So how does it work?

Step 1: register a domain name that is a misspelling of trade mark (e.g. mersedesbenz.com).
Step 2: sign-up to an affiliate program.
Step 3: direct the domain name to a webpage of the affiliate program, which generates advertising based on targeted keywords.
Step 4: wait for the misspelling and confusion to begin.

The average click earns $0.05 for the domain name registrant, assume a site receives 100 clicks a day that equates to $150 per month or $1800 a year. If the registrant has a portfolio of 100 similar domain names it would bring in $180 000 a year. Some typosquatting sites can generate over a 1 000 clicks a day. All revenue is derived from infringing upon a trade mark and relying on the confusion caused from a common misspelling.

In order to establish whether a trade mark has fallen victim to typosquatting it is advisable to conduct a domain name audit and to implement a watch service to assist in identifying potential infringements.

The most successful form of typosquatting is the use of the prefix “www” (World Wide Web) as part of a domain. This type of registration relies on the Internet user omitting the point (period or full stop) between “www” and the domain name. For example instead of typing www.hsbc.com the user types wwwhsbc.com. We list some more examples below, which all point to an affiliate website.

• wwwtoyota.co.za
• wwwsainsbury.co.uk
• wwwsundaytimes.co.uk
• wwwumbro.com

Over the years the National Arbitration Forum has decided over 270 UDRP complaints involving domain names that had incorporated the prefix “www”. This form of infringement is increasing and trade marks owners should consider taking pre-emptive measures by registering all their well-known trade marks with the prefix “www” as part of the domain name such as wwwlexsynergy.com.

The Cost of Domain Name Management

The state of the world economy is not exactly in the best shape and everyone is looking to cut costs. Trade mark owners are no different.

We have seen trade marks owners being charged exorbitant amounts to manage their domain name portfolios by niche domain name management companies. They even go so far as to charge for updating nameservers of TLDs (Top Level Domain) that have an automated registration system. A nameserver charge is normally only levied on TLDs that have a more complicated registry interface and require “physical” work from the domain name management company. If your company is continuously changing its nameservers you could be paying more for the technical changes than the domain name itself.

Most niche domain name management companies provide similar services (technical and support perspective) so the real distinguishing factor should be price. We would advise trade mark owners to shop around in the industry and compare prices.

The saving could result in having extra funds available to secure domain names in new gTLDs (generic Top Level Domain) or extend protection in the various ccTLDs (country code Top Level Domain).

So how can a trade mark owner save in the management of its domain name portfolio?

Well, a domain name portfolio continuously increases as a result of the following:
• New TLDs being released;
• Domains acquired through the UDRP (Uniform Dispute Resolution Policy) or threatened litigation;
• Business acquisitions and mergers;
• Marketing campaigns.

This continuous increase obviously makes the task of cost reduction more difficult. We propose that the solution is to ensure that your domain name management company is offering competitive prices for registrations, renewals and updates.

What should you look for in domain name pricing?

• Registration and renewal costs – some domain name management companies quote their administrative fee separately from the registry fee resulting in the total fee being much higher than quoted. You should be able to negotiate on the management fees.
• Costs for changing administrative and technical contact information should be free for most (although not all) TLDs.
• Cost for a registrant transfer should not be more than the registration fee.
• Change of nameserver, in most cases, should be free.

It can be a daunting task moving a domain name portfolio from one domain name management company to another but it may save your business thousands of pounds a year.

Lexsynergy.com

Neitherlands v Netherlands

One of our first blog posts dealt with sub-domains created from gTLDs (generic Top Level Domain) and ccTLDs (country code Top Level Domain), which are marketed as alternative TLDs such as uk.com and co.nl. We have decided to re-visit this issue after we received an email from the general manager of the sub-domain co.nl explaining that there is no link between the operator of co.nl and nl. Extracts from the email are inserted below (contact us to receive the full email). See the SIDN (.nl Registry) press release.

“… we feel it is important for potential customers to clearly understand the differences between CO.NL and SIDN..
As an example, article 1 of the FAQ explains “the registration of a CO.NL subdomain (as offered by EuroDNS which is acting as Operator) should not be confused with the registration of a .nl domain name through SIDN, the official Registry of the .NL extension on the Internet. SIDN is not involved in any way with the registration or servicing of CO.NL subdomains by EuroDNS”.
Under the policy devised by EuroDNS and its Dutch partners, the CO.NL domain name has been registered for the benefit of the Internet community and subdomains will be usable as part of any Internet address (mail, web or otherwise such as joe@myname.co.nl or http://mydutchcompany.co.nl) and have no location-related requirement. Users of .NL domain names will also have an easy way to complement their Internet presence with a CO.NL by taking advantage of the CO.NL « Grandfather period ». With that option to be launched by the end of the year, the holder of any given .NL can elect to be granted the corresponding CO.NL.
2. Is there a difference between CO.NL and other subdomains such as CO.UK or CO.JP ?Technically, yes. While CO.UK is a subdomain operated by Nominet Plc (the .UK Registry), CO.NL is a domain name with no other link with SIDN (the .NL Registry). However, EuroDNS registered the CO.NL domain name to allow any interested user to use it as a third level domain. Therefore, from a practical standpoint, there is virtually no difference: http://www.abc.co.nl could go to the same page as http://www.abc.co.uk and emails at me@mydomain.co.nl will reach you as easily as with myotheremail@domain.co.jp. CO.NL is built in such a way that any other server (FTP, Telnet…) can be used as well.
5. Can I register a CO.NL with any SIDN Registrar ?Because CO.NL has no link whatsoever with SIDN, SIDN’s partners do not automatically allow registration in CO.NL. However, the list of Registrars accredited by the CO.NL operators is growing rapidly and already include key Dutch registrars. An overview of the currently accredited CO.NL Registrars can be found at www.domain.co.nl.

Besides causing confusion with the .nl Registry, there are obvious risks associated with registering a domain that is part of a sub-domain such as the risk of the owner:

• not renewing the domain;
• being liquidated;
• discontinuing its service; and
• being cited as party to a domain name dispute.

If these serious risk to domain name/trade marks owners exist then why are these sub-domains popular or worth promoting? Well, it may be an alternative to establish some domain presence if the required domain is no longer available within a specific ccTLD namespace but it is also a convenient way around complying with local restrictions.

A good example is .ee (the ccTLD for Estonia). The regulations provide that only locally established corporations can register one domain name. With such restrictive regulations trade mark owners are driven to the sub-domain co.ee registered by a local company (similar to co.nl) and marketed as the regulation free Estonian TLD.

The next logical question is why does the Estonian Registry (EENet) not relax or remove the restrictions to promote Internet activity in their country. What would happen to the Estonian economy if a company or private individual was only allowed to register one trade mark? So why is it different on the Internet?

If these ccTLD operators do not relax certain restrictions it could stifle Internet investment resulting in the loss of a potentially lucrative revenue stream for those countries as well as potentially being ignored by the Internet community when the new gTLDs are released.

We believe the IP community needs to debate domain name issues more actively to encourage registries to change restrictive policies.

Lexsynergy will be presenting a brief seminar on domain names covering important issues affecting IP owners. The brochure is inserted below.

The seminar is presented in an informal manner during a lunch break or after hours at the attendee’s office. There is no charge for the seminar.

The seminar is currently being presented in the UK, Austria, South Africa, Germany, Hungary, Czech Republic, Switzerland, Luxembourg, Slovakia and Ireland.

If you are interested in hosting this seminar for your employees involved with trademarks or domain names, email info@lexsynergy.com or call us on +4420 81331 319 or visit our website for more contact information.

KeepYour.co.uk

Today Nominet UK launched a campaign to encourage domain name registrants to renew their domain names. More information can be found at http://www.keepyour.co.uk.

As a Nominet Registrar we have reduced our .uk renewal fees (for a limited period) to £2.95 per year in order to also promote renewals of .uk domains. If you are interested in participating in this promotion send an email to domains@lexsynergy.com.

Another Day Another Scam

We received the above notice from Domain Registry of America informing us of the renewal of our domain name lex-synergies.net. Since we manage our own domain names it was easy for us to identify the notice as a scam but for the untrained domain name owner it may not be. If the instructions are followed it will result in the domain name being transferred to that company.

If you Google "Domain Registry of America" or "DROA" you will find reports on the scam from other bloggers and news sites so we will not repeat what they say.

However, we want to mention that this type of scam highlights the importance of ensuring all your domain names are administered by one domain name provider (registrar) so that notices like the one above, from an unknown third party, can be ignored or reported to your domain name provider.

To Many Names

ICANN recently announced the relaxation of its rules governing the launch of new TLDs. It has been dubbed "the biggest event to hit the Internet since .com". Is it really?

What we understand from the announcement is that it would be easier to launch a new TLD provided certain criteria are met. So if an applicant has the technical infrastructure and financial resources it will be good to go.

So we might see extensions like .google, .xxx and .sex. Obviously certain restrictions will be in place to guard against use of offensive words or trade marked terms.

On the face of it, it seems ground breaking but in reality it may create confusion on the web, discouraging domain name use and driving people to search engines.

But what if a trade mark is approved as a TLD e.g .delta? Will there be a Dispute Resolution to cover this? If so, will it not create another form of infringement for cybesquatters with lots of money? It is well-known that some registrars are behind domain name tasting, this may be another avenue for the same conduct.

What will happen to country code TLDs? We have read reports about .eng for England. What will become of .uk?

It is widely reported that the cost for applying for a TLD will be in the vicinity of $500,000. This is pocket change for the large domain name registrars, which could result in a monopoly over the more marketable TLDs.

We will apply for .SOS.

Approach "new" domain extensions with caution

As domain names become more popular it is inevitable that the new Top Level Domains (TLDs) will be launched to cater for the growing demand.

Two relatively new extensions are .eu, .asia and .me. Each of these TLDs has a purpose, the first two give a presence to a large geographical area covering a few countries while the third is the country code TLD for Montenegro. These TLDs were established after consultation with the relevant governing bodies and are considered to be legitimately established.

Notwithstanding the various sunrise periods, most domain names are registered on a “first come, first served basis” so if you are second, you have lost out.

Well, not really. Savvy entrepreneurs have created new extensions that appear to be affiliated with a legitimate TLD but are in fact sub-domains. The first company to do this on a global scale was Centralnic. Through their service it is possible to register a domain name under extensions such as uk.net or uk.com.

At first glance it would appear uk.com is probably endorsed by Nominet the governing body of the .uk TLD. This is not the case, it is just a two letter domain name registered under the .com TLD. If you visit the .com whois database you will see uk.com is registered to Centralnic Ltd.

This form of domain name has now been expanded upon by EuroDNS, who has begun to offer domain names such as com.org.lv, com.co.ee and com.asia.com. In a few months time co.nl will be launched.

The co.nl domain name is registered in the name of S Scholten.

On its website it states “CO.NL is registered as a domain name but the CO.NL Operator does not have any affiliation with the SIDN Registry.” It is clear that this domain name is not sanctioned by the .nl registry – SIDN.

This domain name will be used as an alternative to the .nl TLD. If you cannot secure your domain name under .nl, there is no reason not to register a co.nl domain name but be aware that it is not an internationally sanctioned extension and that the risk exists that the domain you have registered is totally dependant on another domain name registered by a private company or an individual as is the case with co.nl.

When registering domain names you need to make sure that you are using a reputable provider and the TLD is a legitimately sanctioned extension. The sub-domains should only be considered as a last resort.

Contact us at info@lexsynergy.com if you need guidance or assistance in registering domain names or protecting your trade mark / brand online. www.lexsynergy.com

Domain News Sites

We have seen it time and again, a domain name news service starting with the intention of reporting news in the domain name industry becoming a forum for Domaining. Rather than remaining an independent news reporting service they become a forum to communicate Auctions and how to profit from domain names. Lexsynergy has contributed articles to such a site but now feels that the ethical approach would be to withdraw as an editor.

Citroen.co.za: Driving its way back to Automobiles Citroen

Automobiles Citroen lodged an ADR complaint against Mark Garrod, through the South African Institute of Intellectual Property Law, for his registration of the domain name Citroen.co.za. Mr Garrod registered citroen.co.za on 16 March 2000.

Automobiles Citroen had registered its trade mark in South Africa in 1953 but did not conduct business in South Africa at the date of the registration of citroen.co.za.

In 2004 Mr Garrod set-up a website at citroen.co.za as a tribute to Citroen cars. The website was not used for commercial purposes and had the following statement on its home page “Welcome to www.citroen.co.za, the official website of Citroen enthusiast Mark Garrod”.

Although Mr Garrod was successful in establishing that the domain name was not an abusive registration in terms of the ADR Regulations, the Adjudicator ordered the transfer of the domain name to Automobiles Citroen.

The Adjudicator held that the problem in this case was the “conflict between the legitimacy of (the name for) a tribute site, and the rights of the Complainant in and to its trade mark”.

The Adjudicator summed up the principle in this case as follows “when the mark of another is appropriated, it must be in a manner that cannot leave scope for doubt but that it is wholly descriptive and truthful. When that happens, jurisprudence deems the use acceptable, otherwise not. In the Adjudicator’s view, <www.citroen.co.za> does not meet this test”

The Adjudicator stated that “prima facie, a trade mark owner – at least, particularly a registered trade mark owner – ought to be able to register a domain name comprising his trade mark, and nothing but his trade mark. In the modern world of e-commerce, this is de rigeur. Why should a trade mark proprietor be held to ransom (metaphorically speaking) because he was not quick enough?”

The Adjudicator also mentioned that a trade mark owner should not be held to ransom where it has failed to secure its trade mark as a domain name, however this is a reality as most gTLDs and ccTLDs operate a “first come, first served” registration policy. The only solution is to make sure that your trade marks are secured as domain names at the first available opportunity.

Contact Lexsynergy (info@lexsynergy.com) for advice and assistance in securing your valuable trade mark as a domain name worldwide.

Welcome to the Lexsynergy blog

Lexsynergy is a specialist domain name management company that provides domain name services to trade mark owners and IP law firms.

We regard domain names as a crucial element of intellectual property that require continuous maintenance and management in order to ensure trade mark and brand protection on the internet.

This blog is intended to introduce its readers to our services (http://www.lexsynergy.com/) as well as to provide information on domain name issues affecting trade mark owners.

We also welcome your comments.

Regards

Lexsynergy Team