The Revolution Masterclass on domain names

name registry company NetNames should appear. But, its more common
address is netnames.co.uk.

An easily recognised address, yes, but also easily copied by so-called
cybersquatters who buy domain names and use them as spoilers in the hope
that the company affected will offer cash for the domain. The difference
can be subtle - an extra 's' or hyphen - but the address could not only
fool surfers keying in a domain but also the search engines.

Many corporations will already own variations on their domain names and
their endings, including generic top-level domains (GTLDs) such as
.co.uk, .com .org and .net. But, later this year, the issue is set to
come under the spotlight with the introduction of a new ending for
Europe: .eu.

This could open the floodgates for cybersquatters, presenting them with
a raft of new address possibilities to profit from. As if this wasn't
enough to contend with, there are now 242 national varieties of
endings.

And that's before you get into the anticipated integration of the
internet with mobile phones, which could bring in a .mobi tag.

Choosing the right domain name, and ensuring that no one can profit from
your business online, has never been more important or tricky.

Intellectual property

According to Jonathan Robinson, business development director at
NetNames, a domain name is the intellectual property of a brand. "It's
the way customers interact with your brand online," he says.

Plenty of users will type a brand name into a search engine, but just as
many are also likely to try to guess the URL. NetNames points to
research showing that 60 per cent of users have up to three goes at
guessing a company's domain name before they give up looking, or switch
to a rival brand.

Consider those users who type in Gillette's URL, Gillette.co.uk. At the
moment, they will be directed to a retail site called
magicdomains.co.uk.

Apparently this domain name is for sale at £25,999 - the company
has no plans to buy it - and those customers interested in seeking out
the razor brand's official .com site will have to try again.

Preventing either a rival or troublemaker from owning the domain name
that identifies your company is valuable brand protection. "You don't
want people going to their web site instead of yours," points out
Halberstam.

"And trademarks go hand-in-hand with domain names. If you have one and
not the other, you face big problems." Trademarks obliterate the threat
of cybersquatters. "The trademark is an ace in a dispute; it's the trump
card," says Halberstam. "If you own the trademark, then in a dispute
with anyone who has a similar domain name as yours, the person with the
trademark will win the day."

So cybersquatting, once a big concern for brands, is less of an issue
now, as long as a brand owns the relevant trademark. "Anyone who
registers that name, hoping to profit from your goodwill, is a losing
case. The courts will not tolerate it; it's pretty much dead," he
adds.

Clear message

But having a trademark isn't always enough, he warns, there is the
example of an individual who registered TrivialPursuits.net and then
successfully claimed he registered it to lament life's loss of
individual creativity.

The message is clear: brands should get ahead and buy the names they
want.

Here, firms need to tread carefully and ensure they are using a
reputable company to register their name or names. "There are a lot of
people who sell domain names; some are reputable and some are
disreputable," says domain name specialist Simon Halberstam, partner and
head of e-commerce law at Sprecher Grier & Halberstam. He is also
co-author of Domain Names - A Practical Guide. "Make sure they are
accredited by ICANN or have a good reputation," he adds.

ICANN is the Internet Corporation for Assigned Names and Numbers, which
supervises the domain name system (DNS). Under this, a registry
operator, such as Nominet, monitors who registers what and is
responsible for one or more TLDs.

Markus Eggensperger, legal and PR director, domain business Europe, at
Lycos, adds: "You should register them with an established, trusted
domain name registrar. A lot of smaller companies that offer domain
names for low prices are not offering a good service."

This service will include handling any changes that may happen following
registration. "If you want to transfer your domain name to another
company or daughter company, this causes problems. You have to work out
your administration and handling these challenges demonstrates a good
service from a provider, not just a great price."

Lycos WebHosting offers a management tool that allows customers to
register, handle, manage and gain an overview of all the domain names
they own.

"If you have many domain names, this is a must," adds Eggensperger.

Problems can resurface when a domain name expires. "Brands pay for the
use of a name for a certain period, with an average of two years,"
explains NetNames' Robinson. There needs to be someone keeping tabs on
this, because when the contract for the name expires, anyone can step in
and snap it up, and while you argue your case they could be doing
anything on it.

If someone does manage to get hold of your name, what can you do? "If
there is someone sitting on your name, keep an eye on them," says
Halberstam.

"If they are infringing on your brand, do you want to take action? If
they are not doing anything on the site that is in conflict with your
brand, you might just want to monitor it." But, remember, if you don't
use the name, someone else inevitably will. "Keep your house in order.
Protect your existing domain name. Don't let it lapse," advises
Halberstam.

He recalls a case his firm worked on, on behalf of Warner for singer
Holly Valance in which it didn't register a hyphenated version of her
web site. Someone else did. "When they didn't get the money they asked
for from Holly's agent, they then linked it to a soft-porn site," he
explains.

Weblaw took action under the nominee resolution policy name, and it was
successful on the basis that the registration had no legitimate claim
and was besmirching Valance's reputation.

There was another case in which a small company registered the name
post-office.co.uk and it had nothing to do with Royal Mail. The company
handed over the site with a cash settlement. But the argument was that
names that are generic and descriptive don't necessarily reflect a
brand. "That is when cybersquatters can do well," adds Halberstam.

Gripe sites

Then, of course, there are gripe web sites, which can range from
incorporating 'I hate' or 'sucks' into a brand's name to something like
Badcardeal.org.

"It's a difficult one to deal with - people are entitled to express
themselves," says Halberstam, although he points out: "If it is too
close to the bone, you may be able to sue them for libel."

Getting domain name management right is vital as a brand's online
presence gains importance. It is worth remembering that domain names can
also form the basis for other services, such as mail accounts, and that
could affect the name chosen.

The internet is also increasingly acting as an interactive hub for
campaigns and the URL an advertiser picks is important. This February,
Martin Lock, director of marketing and e-commerce at Excel Airways,
bought XL.com as a snappy and memorable conduit to its online travel
portal.

NetNames' Robinson says: "There's a trend in the industry where a lot of
advertisers use campaign-specific URLs. They are more memorable and more
creative. You can use them to link to a specific page on your site, and
this makes the campaign more manageable and measurable." Research from
NetNames reveals that 50 per cent of all TV ads, 80 per cent of press
ads and 22 per cent of ads on radio now carry a URL. So, think about the
power of brands such as lastminute.com or amazon.com.

When registering different endings, remember to consider the different
country suffixes, as well as the image you want to convey on the
internet through the different top-level domains. Many countries are now
waking up to the power of domain names in online marketing. Until early
this year, most have been without their own bespoke endings (generally
reverting to the .com version of the name), but throughout 2004 and this
year, technology has enabled them to launch their own country-code
top-level domains (CCTLDs).

Most recently, China introduced its .cn suffix.

"Companies that have an international approach must be aware that they
have country codes to remember as well," says Eggensperger. "While
.co.uk is used for UK businesses, a company wanting to appeal in the
French or German market is advised to buy these (.fr or .de) endings. It
depends how your company sees its market and how it wants to extend
it."

The GTLD you choose has a further impact on image. "If your company has
an international focus, .com is the most popular ending; it is the
so-called generic domain name." But .org is popular with charities and
has a non-corporate feel. It depends what online image is needed for the
brand.

European domain

ICANN has recently enabled the use of more country endings and is about
to unveil its .eu ending. This could prove significant for companies and
organisations with a European presence.

Eggensperger explains: "European organisations, companies and private
persons will be able to present themselves under a European domain name.
The European Commission has been stipulating this development to put the
brakes on America's dominant position on the web."

Until now, European companies have had two options. Use the .com ending,
with the drawback of loss of European identity, or buy as many different
country domain names as possible from every member state. The
disadvantage here is that many country TLDs are not well known.

Eggensperger suggests that .eu domains could "match or even succeed the
significance of the .com domain in Europe".

Registration will start by the end of this year, after a 'sunrise
period' of four months. This buffer period lets companies show their
interest or 'earmark' the .eu domain names they wish to register.

"It's not possible to register the .eu domain name at the moment, but
you can indicate your interest by earmarking your domain name free of
charge. This is non-binding. Then you can be sure that you are informed
when it all starts. I would advise that you earmark your domain name, so
you don't miss pole position in the sunrise period," says
Eggensperger.

United-domains offers customers these earmarks in its database, visit
United-domains.de.

"However, there are others in the market who aren't serious," warns
Eggensperger.

"They aren't the good guys. If they charge their customer for
pre-registering domain names, that's not good. I would not recommend
that."

Mobile telephony

Something else to be aware of is the Enum project. Still in development,
it is an ongoing plan that considers the idea of using a domain name
system in connection with mobile telephony, supported and sponsored by
the big phone companies. This will integrate the IP and domain name
systems. "This is another area of interest at the moment," says
Eggensperger. "It will mean a new top-level domain name such as .mobi."
But, he cautions, "it might not see the light of day".

However, the shake-up in the domain name sector this year is very
real.

There are too not many opportunities to talk about Shakespeare in
digital marketing, but to answer the question, "What's in a name?", when
it comes to domain names, it seems the answer is everything.

MASTERCLASS PANEL

Markus Eggensperger is legal and PR director, Domain Business Europe, at
Lycos. He founded united-domains with three others in 2000. It was
acquired in 2004 by Lycos. Eggensperger is an expert on brand and domain
rights, competition and corporate law.

Simon Halberstam is partner and head of e-commerce law at Sprecher Grier
& Halberstam LLP. Co-author of the book Domain Names - A Practical
Guide, Halberstam specialises in all contractual and litigation matters
relating to IT and e-commerce.

Jonathan Robinson is business development director of NetNames and
non-executive director of the .info domain registry Afilias Limited and
the .uk domain registry Nominet (UK). Co-founder of Group NBT, provider
of domain names and internet-related services.

HARRY POTTER AND THE CYBERSQUATTER FROM URUGUAY

Children (or adults) keen on Harry Potter are likely to search around
the subject online and this could involve guessing URLs, such as a
variant of the author's name.

While the domain name jkrowling.com could possibly be used in good faith
by someone else in the world with a similar name, in the hands of an
individual who is using it in bad faith, it becomes a cyber-squatting
case.

The author was faced with such a battle at the end of last year. J K
Rowling, won her case against a cybersquatter who registered the domain
names kjkrowling.com and www-jkrowling.com.

The domain names were compulsorily transferred to her on Tuesday 21
December 2004, following a decision by the Geneva-based UN agency World
Intellectual Property Organisation (WIPO).

The cybersquatter, who was based in Uruguay, had been using the domain
names to drive internet traffic to a web site. On arrival here, a Potter
fan would have been bombarded with unsolicited pop-up ads for a variety
of goods and services.

WIPO decided that the cybersquatter was acting in bad faith and ordered
him to transfer the name over to J K Rowling.

David Engel, an internet lawyer at law firm Addleshaw Goddard, who
represented Rowling in the proceedings, said: "The internet is not a
law-free zone, and the sooner that cybersquatters and other
not-so-innocent online entrepreneurs wake up to that fact, the better."
Engel is a partner in the Technology, Media and Intellectual Property
group and advises on internet issues including domain name disputes.

Neil Blair of the Christopher Little Literary Agency said: "We take very
seriously the protection and enforcement of J K Rowling's intellectual
property rights across the world, including on the internet." He added:
"We always aim to resolve such matters amicably, but if it proves
impossible to do so, we have no option but to seek legal redress."

TOP TIPS ON DOMAIN NAMES

1. Be pre-emptive in registering variations. Competitors often register
variants on established domain names. An extra 's' or hyphen can fool
not only surfers keying in a domain but also search engines.

2. If you are anticipating ad campaigns abroad, you should register the
local domain names too, such as .de for Germany, .au for Australia.

3. The courts do not have much truck with cybersquatters. If your domain
name is well known, you can usually make them see sense by having
specialist IT lawyers send them a letter.

4. Threaten court action for damages or instigation of proceedings to
obtain the domain name via the appropriate dispute resolution
procedures.

5. Offer not to start proceedings if the domain name is transferred
without charge.

6. If a competitor uses your brand in meta-tags or pays a search engine
to make its site come up in the listing each time your brand name is
entered, you have a potential case against both.

7. Think long-term about the brand when brainstorming company names and
domains. Where will your company be in five years' time?

8. Buy domains in bulk to reduce the overall cost and make management
easier.

9. Make sure you use domain names for campaigns sensibly; for example,
Domain.com/radio or Domain.com/tv.

10. Don't make your potential clients or consumers guess. Keep it
simple.

Thanks to Simon Halberstam, partner and head of e-commerce law at
Sprecher Grier & Halberstam LLP and Weblaw.

CHECKLIST

Questions that should be considered when thinking about domain names

- Have you allocated the task of domain name management to someone in
your organisation?

- Have you thought about registering domains that protect your brand,
including spelling variations and international extensions? This goes
for the range of alternative endings like .xxx, .org, .net and the
soon-to-be-available .eu.

- Have you researched copyright and trademarks?

- Can you easily communicate the domain and is it easy to spell?

- Are you sure that all sources of confusion have been eliminated? This
could mean jettisoning 'cool' spellings of words and wordplay.

- Have you put reminders in place to notify you when the domain names
will be available for renewal?

Thanks to Dominic Trigg, vice-president of Infospace Europe, Search &
Directory.