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Alexander Ramage Associates Trade Mark Attorneys


	Lectures given by Eric Ramage & Maggie Ramage

Lectures by Eric Ramage
-	Lecture to ITMA (March 2010)
-	Working with dots (March 2008)
-	Revocations and Restrictions (Sept. 2006)
-	Internet Issues (July 2006)
-	Overlap between trade marks and design rights (April 2005)

Lectures by Maggie Ramage
-	Lecture tour China/Japan (Oct. 2008)
-	Lecture to INTA Berlin (May 2008)
-	China and Japan Lecture (October 2006)

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Working with Dots

"Joining up the Dots"
and
“Internationalising the Dots”
Domain Name Management Issues.
Eric Ramage
(March2008)

First what exactly is a domain name?

The Domain Name System (DNS) associates various sorts of information with so-called domain names, translating human-readable computer hostnames, (words) into the IP addresses (strings of numbers) that networking equipment needs to deliver information.

It also stores other information such as the list of mail exchange servers that accept email for a given domain. In providing a worldwide keyword-based redirection service. The Domain Name System is an essential component of contemporary Internet use.

A domain name usually consists of two or more parts (technically labels), separated by dots. For example itma.org.uk or ecta.org. That part to the furthest right is the top-level domain, or TLD . Thus with ecta.org the top level domain or TLD is org. In itma.org.uk the TLD is UK (and org in this case is a second level domain or SLD).

Each label to the left specifies a subdivision, or subdomain of the domain above it. So with itma.org.uk ITMA is a subdomain of org.which is a sub domain of uk . In theory, this subdivision can go down to 127 levels deep. Each label can contain up to 63 characters. The whole domain name must not exceed a total length of 255 characters. In practice, some domain registries may have shorter limits.

A hostname refers to a domain name that has one or more associated IP addresses. www.ecta.org and www.itma.org.uk are both hostnames, However, “dot org” or “dot uk” are not.

So we can see the term domain name has multiple related meanings:


	A name that identifies a computer or computers on the internet. These names appear as a component of a Web site's URL, e.g. itma.org.uk. This type of domain name is also called a hostname.
	The product that domain name registrars provide to their customers. These names are often called registered domain names.
	Names used for other purposes in the Domain Name System (DNS), for example the name which follows the @ sign in an email address, or the Top-level domain names like .com
	They are sometimes colloquially (and incorrectly) referred to as "web addresses".

The most common types of domain names are hostnames that provide more memorable names to stand in for numeric IP addresses, and they will be the subject of today’s seminar.

An IP address (Internet Protocol address) is a unique address that certain electronic devices use in order to identify and communicate with each other on a computer network utilizing the Internet Protocol standard (IP).

Any network device can have its own address that is unique within the scope of the specific network. Some IP addresses are intended to be unique within the scope of the global Internet, while others need to be unique only within the scope of an enterprise.

Only the techies within your organisation need to know the IP address of the network printer, but you all need to know the IP address of the computer where you will find your favourite website. If you wanted to look at my website you would type www.ramage.co.uk into your web browser but when I access my office server from outside the internal network I must type its IP address which is a string of numbers into my web browser (or I would if I didn’t have it set up for automatic dialling).

IP addresses for the Internet are managed and created by the Internet Assigned Numbers Authority (IANA). The IANA generally allocates blocks of these numbers to Regional Internet Registries, who in turn allocate smaller blocks to Internet service providers.

By allowing the use of unique alphabetical addresses instead of numeric ones, domain names allow Internet users to find and communicate with web sites more easily. The flexibility of the domain name system allows multiple IP addresses to be assigned to a single domain name, or multiple domain names to be assigned to a single IP address. This means that one server may have multiple roles (such as hosting multiple independent Web sites), or that one role can be spread among many servers.

Historically, Hostnames were restricted to the ASCII letters "a" through "z" (case-insensitive), the digits "0" through "9", and the hyphen, with some other restrictions. Registrars restrict the domain names they allocate to valid hostnames, since, otherwise, they would be useless. The Internationalized domain name (IDN) system has been developed to bypass the restrictions on character allowances in hostnames, making it easier for users of non-English alphabets to use the Internet.

I will deal with this later.

Can the Internet get any bigger? - New gTLDs

ICANN is actively pursuing a policy to establish the application process for new generic top-level domains (gTLDs). This is seen as the first step on the process that will lead to the launch of a round of new gTLDs in 2008.

The Generic Names Supporting Organisation (GNSO) set up a Committee on New Top-Level Domains that identified the following reasons why ICANN should introduce new gTLDs


1.	It is consistent with the reasons behind the first round of new gTLDs.
2.	There are no technical impediments to the introduction of new gTLDs,
3.	There is demand for additional top-level domains as a business opportunity; and, last but not least,
4.	There no perceived compelling reason not to proceed with new gTLD creation.

Consequently, there is some speculation that after the delegation of AERO, .BIZ, .COOP, .INFO, MUSEUM, .NAME and .PRO in 2000, and the delegation of .ASIA, .CAT, .JOBS, .MOBI, .TEL and TRAVEL, in 2004, ICANN may delegate a much larger number of new domains. Figures I have heard bandied about are possibly as many as 100.

The Report outlines seven principles for introducing a new gTLD:


1.	should be introduced in an orderly, timely and predictable way.
2.	Some should be IDNs, subject to the approval of IDNs being available.
3.	They should meet the demands of the new applicant registries as well as add to consumer choice, market differentiation, and geographical and service-provider diversity.
4.	Applicant registries must have the technical expertise to run them to minimise the risk of harming the operational stability, and security of the Internet.
5.	Applicant registries must be able to meets their obligations under the terms of a registry agreement.
6.	Operational criteria in the registry agreement to ensure compliance with ICANN policies.
7.	The process of evaluating the proposed gTLD should not infringe on an applicant registry's freedom of expression rights under internationally recognized principles of law.

As part of the Technical criteria the character string chosen as the name of the new gTLD must not infringe on names reserved by ICANN or be confusingly similar to an existing TLD.

That said, it is the view of ICANN’s technical experts a string that resembles another string is not necessarily confusingly similar.

In reviewing the approval of .BIZ in light of the existence of .BZ in 2001, the relevant ICANN Committee concluded that the two TLDs “do not appear reasonably subject to confusion,”

At one point, .bz domains were being marketed by an American company as standing for "business", and that company took legal action against ICANN in an attempt to block the .biz domain as "unfair competition".

As well as .bz and .biz TLDs that co-exist today include .cm (the Cameroon) and .com.

Both bz and cm have been heavily marketed for use other than as the country code of the respective countries, as my slides illustrate.

The LOANS.COM domain name resolves to the web site of Bank of America.

The LOANS.CM domain name resolves to a web site that provides advertising links to people offering loans. I will come back to this later.

LOANS.BIZ resolves to the web site of a company called ZamZam Co-operative Limited which describes itself as a registered Industrial & Provident Society.

LOANS.BZ resolves to another advertising web site with links to more people offering loans.

ICANN has frequently been accused of ignoring the concerns of intellectual property owners. A more realistic assessment is that few IP owners ever attend ICANN meetings or raise their voices in protest at policies that have been pushed through by domain name vendors.

ICANN will be in Paris in June. If you have the time, attendance is free.

A GNSO working party has also been looking at what is called Domain Tasting.

Domain tasting is a practice built up in recent years that uses a grace period intended to allow correction of typos and other errors to register domain names on a temporary basis in order to test their profitability for example as advertising tools. We saw some examples with loans.bz and loans.cm.

During this grace period, registrants conduct a cost-benefit analysis to determine if the tested domain names return enough traffic to offset the registration (currently around $6 for a dot com or similar gTLD).

This so called “Add Grace Period” is typically the five day period following the initial registration of a domain name. It appears as a contractual term in some, but not all gTLD registry agreements. Its true purpose is to enable errors to be rectified, quickly and simply.

If a domain name registered by an ICANN accredited registrar is cancelled during this period the registrar receive a full credit for the registration fee from the registry.

Once a domain name has been deleted at this stage, it is immediately available for registration by any registrant through any registrar.

The AGP did not arise from an ICANN policy process. It was instituted by registries with the agreement of registrars and introduced into the registry contracts for .BIZ, .COM, .INFO, .NAME, .NET, .ORG and .PRO.

Most domain tasting is done by a small proportion of registrars. According to the .ORG monthly report for January, 2007 five registrars deleted within the AGP 99.4% of the domain names they registered.

The combined .COM and .NET monthly report for January, 20078 shows that ten registrars accounted for 95% of all.COM and .NET domain names deleted during the AGP.

ICANN’s At-Large Advisory Committee (ALAC) representing the interests of individual Internet users asked the Generic Names Supporting Organisation (GNSO) to review the practice of domain tasting.

ALAC described domain tasting as “the systematic exploitation of the five day AGP to gain access to domain names without cost.” They listed five areas of concern

First, Destabilisation of the domain name system,

The operational load on the registry systems caused by domain tasting may cause instability in the gTLD namespace or the entire DNS.

Second, Consumer confusion,

Consumers trying to register names whose availability changes quickly due to domain tasting activity may be confused because the names seem to appear and disappear.

Existing registrants may also find that their expired names are registered by others much faster than occurred in the past, making registrants significantly more likely to lose a name whose registration they have failed to maintain.

Internet users may report a lower quality of experience when encountering a high volume of parked pages or advertising-related links in response to search queries. On the other hand, some Internet users may prefer to encounter parked pages with possibly relevant content or links than a “page not found” response.

It must be noted here that some large Internet service providers and popular browsers already redirect queries for domain names that cannot be found to advertising pages. Recent versions of Internet Explorer direct users to a page on the Microsoft website rather than serve up a ‘file not found’ when a user types in an incorrect URL.

ALAC suggested that if users encounter continual negative experiences in trying to register domain names or in using the domain name system (DNS), the result is a general undermining of confidence in the DNS. Some users have raised concerns that the practice of domain tasting reduces the number of available names to, for example, potential business owners.

Third, Increased costs and burdens to legitimate registrants,

Registrars who do not indulge in domain tasting may find that confusion associated with tasting activities results in higher support costs for them.

“Tasted” names may be in conflict with other registered names, resulting in other registrants and trade mark holders having to assume monitoring costs and the need to purchase additional defensive registrations.

Registry costs may be increased because of the operational load from the volume of add and delete transactions.

Fourth, Trade Mark abuse

utomated programs are able to find and register “typographical permutations” of a trademark. Policies such as the UDRP exist to provide recourse for those who believe their trademarks are being infringed.

Existing dispute resolution mechanisms may not be sufficiently fast acting or cost-effective for trade mark holders to use in dealing with all infringement or typo-squatting activity that may occur as a result of domain tasting.

The short timeframes involved in adding deleting, and re-registration of domain names could make it difficult for trademark holders to effectively use the UDRP.

Fifth, Criminal activity.

Names being added and deleted also makes it more difficult for law enforcement to access records and pursue cases of criminal activity. The capability to do domain tasting also enables activities such as phishing or pharming.

Phishing is the practice of creating a replica of an existing webpage to fool a user into submitting personal, financial or password data.

Pharming is the practice of redirecting a website’s traffic from a legitimate website to a bogus website for the purpose of stealing personal, financial or other data.

I will add here that the roles and responsibilities of neither ICANN nor Nominet extend to Internet content. The use to which registered domain names is put is not within scope of ICANN or Nominet policy.

Domain tasting is already a business model used by certain registrants.

Although ICANN says that further research is needed, to look at competition aspects in August 2006, Nominet announced a limit on the number of registrations in .UK that can be deleted by registrars, thus effectively blocking domain tasting as a business model in the uk name space.

A recent statement from the World Intellectual Property Organisation (WIPO) http://www.wipo.int/portal/en/news/2007/article_0010.html. drew attention to domain tasting as one of several factors that have given rise to the mass registration of domain names, with registrations “often anonymously undertaken on a serial basis without particular attention to third- party intellectual property rights.”

WIPO reported a 25% increase in cyber-squatting disputes in 2006 over the previous year, and linked this to various developments in the registration market, including domain tasting:

the evolution of the domain name registration system is causing growing concern for trademark owners, in particular some of the effects of the use of computer software to automatically register expired domain names and their ‘parking’ on pay-per-click portal sites, the option to register names free-of-charge for a five-day ‘tasting’ period, the proliferation of new registrars, and the establishment of new generic Top Level Domains (gTLDs). The combined result of these developments is to create greater opportunities for the mass, often anonymous, registration of domain names without specific consideration of third-party intellectual property rights.

To put the other side of the coin, Phil Corwin of the Internet Commerce Association opposed what he called the

“expansion of the rights of trademark holders to the detriment of the equally legitimate rights of domain name owners who have risked considerable capital and labor to develop their DNs [domain names] as valuable properties monetised through the provision of content and associated advertising.”

Domain Kiting

The Add Grace Period can be used for continual registration, deletion, and re-registration of the same names in order to avoid paying the registration fees.

This practice is sometimes referred to as “domain kiting.” This term has mistakenly been used as being synonymous with domain tasting, but it refers to multiple and often consecutive tasting of the same domain name.

Kiting practices cannot guarantee a registrant will keep any particular single domain name. As soon as it has been deleted during the grace period it is available to be taken in the drop pool by another registrant. The activity is only practicable if attempting to maintain a number of names – some would be lost at each drop.

Domaining

There is growing commercial interest in the exploitation of domains for the revenues that they can generate through banner advertising and Pay Per Click. According to Steve Forbes, Editor-in-Chief of Forbes Magazine

"Internet traffic and domains are the prime real estate of the 21st century. This market has matured, and individuals, brands, investors and organizations who do not grasp their importance or value are missing out on numerous levels”.

A variety of tools can be used by domain name holders to generate revenue. The name may resolve to a ‘parking page’ that contains advertising or links that may be more or less relevant to the name or to certain associated search terms, for which the registrant has made pay-per-click arrangements with advertisers.

Pay-per-click (PPC) is a technique in which advertisers may bid on “keywords” that they believe their target market would type in the search bar when they are looking for a particular type of product or service, or in which advertisers pay a small sum every time someone is directed to their site from a link appearing in another site.

Domain Parking on the other hand is an advertising practice used primarily by domain name registrars and internet advertising publishers to generate revenue from type-in traffic visiting an under-developed domain name. (Or to use the parlance “monetize the domain”.)

The domain name will usually resolve to a page containing relevant advertising listings and links. These links will be targeted to the predicted interests of the visitor and may change based on the results that visitors click on. Usually the domain owner is paid based on how many links have been visited (e.g. pay per click) and on how beneficial those visits have been. The keywords for any given domain name provide clues as to the intent of the visitor before arriving.

Another use of domain parking is to be a placeholder of an existing web site. A company might choose to use this method to redirect its website traffic to another web site it owns.

Expired domains that were formerly websites are sought after for domain parking. A domain that was used as a website and is allowed to expire will still maintain most of its prior inbound links. These types of domains usually start off with their largest amount of visitor traffic initially after being claimed from the domain drop lists. As website operators and search engines begin to remove the former inbound links, the traffic to the parked domain will begin to decline.

This in part has given rise to the phenomenon of "Drop Catching". Some domainers use sophisticated software to bombard the registry computers with requests to register domain names that are know to be coming up for renewal, in the hope that they will not be renewed and so be caught and registered for the domainers own use.

So be warned. If you fail to renew a domain name (or even deliberately allow it to lapse) and hope to register it again following lapse, the safe answer is “Don’t; because you won’t”.

Figures from Nominet show that over 25% of cancelled domain names are re-registered within a day of cancellation, and 7% are re-registered within 10 seconds of cancellation.

You might be happy with those odds. My default position with my clients’ domain names is that I renew them unless specifically instructed to cancel them.

Type-in traffic is a term describing visitors landing at a web site by entering a word or phrase in the web browser's address bar (and adding .com or any other TLD extension); rather than following a hyperlink from another web page, using a browser bookmark, or a search-box search.

Example: If you are interested in widgets, then instead of performing a search-engine search for the term 'widgets' you might type 'widgets.com' in your address bar to see if such a web site exists, and, if so, what content is there. Obviously if you are in the business of selling widgets, then owning the domain name 'widgets.com' and having an active website at that address would be a desirable thing, as you could take advantage of the organic, targeted type-in traffic that this name receives.

The secondary market in domain names relates to domain names offered for sale by the current registrant or a subsequent registrant.

According to VeriSign (who run the .com registry) by the middle of 2007, the total number of TLD domain name registrations worldwide was 138 million. This was a 31 percent increase over the same quarter in 2006, and an eight percent increase over the first quarter of 2007. There were 51.5 million Country Code Top Level Domain Names, a 36 percent growth over the previous year and a 13 percent growth over the previous quarter.

.com remained the largest TLD, followed by the ccTLD .de (Germany), and then the gTLD .net. The next largest TLDs, were .uk (United Kingdom), .cn (China) and .org which all had about the same number of registrations.

$400 million in advertising was spent via the domain channel in 2006. Major search engines rely on domain traffic for over 10% of their traffic volume. Ten million .com marketing websites are controlled by domain portfolio owners. Obtaining the right domains whether through private purchase or web auctions is vital if you want to enter the world of domaining.

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	Alexander Ramage Associates, Griffin House, West Street, Woking, Surrey, England, GU21 6BS Tel: 01483 750701 - Fax: 01483 740560 - Email: ARA@ramage.co.uk