In today’s ever increasing online world, domain names have become one of the most important business assets for sales to consumers, contact with and promotion of businesses; however, many businesses do not turn their mind to the protection of their domain names, leaving themselves exposed to cyber-squatters or tactical competitors and loss of potential business through diverted online traffic.
In fact, many business and organisations would not talk about their “domain names”, although many would mention their ‘‘websites”. If asked to consider what exactly a domain name is or whether it is any different from a website a lot would call for their IT expert.
If this sounds familiar, or if your business or organisation has, or plans to launch, a great website and online marketing campaign and you have not thought much about domain names, this basic guide is your place to start.
What are domain names?
Domain names are essentially the addresses of websites (or webpages on which the online content is displayed). As explained by the Internet Corporation for Assigned Names and Numbers, better known as “ICANN”, each computer connected to the internet is assigned a unique numerical string known as an Internet Protocol (or “IP”) Address. As IP addresses are long and difficult to remember numbers a Domain Name System (DNS) was invented whereby these long numerical IP addresses were converted into unique alphanumeric addresses, or “domain names”.
Who manages domain names?
The main body for the management and coordination of domain names on the internet is ICANN – a US-based not-for-profit public benefit organisation formed in 1998. With the assistance of supporting organisations, ICANN allocates and accredits generic top-level domains (gTLDs) (e.g. “.com”; “.net” “.org”) including country code top-level domains (ccTLDs) (e.g, “.au” (Australia), “.cn” (China), “.eu” (European Union).
In Australia, ICANN is assisted by ‘‘.au Domain Administration Ltd” (or “auDA”) which has been formally endorsed by the Australian Government as the administrator of the “.au” domain names. auDA implements ICANN policies in relation to .au domains and also works with ICANN to develop specific policies and guidelines relating to .au domains.
How do I register a domain name?
Domain names can be registered by “Registrars” – businesses which can register a domain name by allocating a name to an IP Address which is then given to the customer to use as the location of their website. In Australia, there are a number of Registrars that are formally approved by auDA as being compliant with its policies and standards. A list is available on the auDA website. It is important to ensure that the Registrar you use is an approved Registrar. Once the domain name is registered it is added to the auDA registry ensuring that an identical name cannot be registered.
What if the domain name is already taken?
Based on the above, to be able to register a new domain name, the proposed name should be available. If the name has already been registered by another person, you will need to come up with an alternative name unless you can get the registered owner of the domain name you were seeking to transfer it to you. Sometimes to have the name transferred to you is simply a matter of purchasing the domain name but this only applies if the domain name is held by an authorised re-seller. Authorised re-sellers (which may also be auDA authorised Registrars) are allowed by auDA to register the domain name in their name and keep it unused until the right purchaser comes along. Re-sellers do this to secure domain names that are likely to be sought after so they can then be the ones to sell (and register) the domain name for their buyer.
If a domain name is registered by someone who is not an authorised reseller (including as an auDA authorised re-seller) and that person is simply holding the domain with the intention of reselling rather than using the domain name for a legitimate business purpose (a practice known as cybersquatting), auDA may be able to investigate and cancel the registration of the domain name if cybersquatting is found.
If however the already registered domain name you want is being used legitimately for someone else’s business, your options are narrow. Unless you can prove that you have a better right to that domain name than the current registered-owner (see Domain name disputes below), your only option is to negotiate with the domain name holder to purchase the domain name (this may involve you wanting to purchase the domain name along with the whole business), or to seek a different domain, but being very careful to avoid a domain name that is too close or similar to the other person’s domain name.
Domain name disputes
There may be cases where one domain name holder has better rights to a domain name than another. For example if someone had been running a business with an ASIC Business Name Registration and/or registered trade mark rights in the business name which features identically or with a high degree of similarity in another person’s registered domain, then the first-mentioned business owner may be able to file a complaint to auDA to have the domain name cancelled or transferred. However this depends on many complex questions of domain law that would need to be addressed in accordance with the auDA Dispute Resolution Policy. As such, it is important to be aware of how you are using your domain name, how it connects to your business and intellectual property and what other domain names out there may be similar to yours. You may therefore need a closer look what domain names exist given that if they are not in your control they could be diverting potential traffic away from you. It is even strategically valuable to hold a number of domain names with very minor variation to yours to create a buffer between your business domain and other possible registrable names.
On the flip side, when choosing a domain name it is worthwhile to check what similar names exist and if possible avoid the conflict. Seeking early legal advice including assistance with your due diligence enquiries will save you significant costs and difficulties later on if a conflict occurs.
What are the new generic top level domains (gTLDs)?
If the internet kicked off in the 90s, then sometime around 2000s the “.com” and country variants got boring! By 2008, ICANN resolved to introduce new gTLDs which would be progressively released to the Registrars and the public. The new gTLDs are identical in function to the old ones (i.e. pinning the domain name to a ‘‘.something”) but unlike the old gTLDs, the new ones are far more adept at adding something unique, useful or distinctive to the domain name. For example, new gTLDs can more specifically and clearly identify the type of business behind the website domain or the classification of a service, geographical area, or subject matter of the website (no matter how narrow or broad). The following were but a small number of actual new gTLDs available to be registered: “.accountant”, “.amsterdam,” “.business’1, “.cafe”, “.car”, “.dating”, “.engineering” “.blackfriday” “.cool” etc.
What should I do about it?
While the new gTLDs will not affect the ownership of currently registered domain names, they have the potential to broaden the scope of availability. To ensure you make the most of the available gTLDs it may be beneficial to register a number of relevant domain names with gTLDs that are useful to your business or organisation. This might not only assist in building a better presence online, but also avoid complications such as cybersquatters or domain name disputes further down the track.
Given the complexities that can arise in determining and protecting a domain name after registration, it is important to be properly informed at an early stage and be aware of how domain name issues interact with your business and intellectual property rights.
About the author
Patricia Monemvasitis is a Partner with Carroll & O’Dea Lawyers where she advises a diverse range of clients, including major corporations, small to medium sized enterprises, property developers, landlords, not-for-profit organisations and schools. Patricia has extensive experience in managing intellectual property issues arising during acquisitions and sales of businesses, amalgamations, restructures, collaborations and joint ventures.
