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GETTING THE DEAL THROUGH Domains & Domain Names Domains & Domain Names & Domain Domains Contributing editor Flip Petillion 2017 Law Business Research 2017 Domains & Domain Names 2017 Contributing editor Flip Petillion Crowell & Moring LLP Publisher Law The information provided in this publication is Gideon Roberton general and may not apply in a specific situation. [email protected] Business Legal advice should always be sought before taking Research any legal action based on the information provided. Subscriptions This information is not intended to create, nor does Sophie Pallier Published by receipt of it constitute, a lawyer–client relationship. [email protected] Law Business Research Ltd The publishers and authors accept no responsibility 87 Lancaster Road for any acts or omissions contained herein. The Senior business development managers London, W11 1QQ, UK information provided was verified between April and Alan Lee Tel: +44 20 3708 4199 May 2017. 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Encompass Print Solutions First published 2014 Tel: 0844 2480 112 Dan White Fourth edition [email protected] ISSN 2055-6500 © Law Business Research 2017 CONTENTS Global overview 5 Japan 33 Flip Petillion Kozo Yabe and Takeshi Kanda Crowell & Moring LLP Yuasa and Hara Litigation on top-level domains 7 Netherlands 37 Flip Petillion and Jan Janssen Manon Rieger-Jansen and Thijs van den Heuvel Crowell & Moring LLP Bird & Bird LLP ICANN dispute resolution procedures 8 Russia 42 Jan Janssen Sergey Medvedev and Ilya Goryachev Crowell & Moring LLP Gorodissky & Partners Argentina 11 South Africa 46 Pablo T Armando Charné le Roux Noetinger & Armando Adams & Adams Attorneys Belgium 14 Turkey 50 Jan Janssen and Diego Noesen Korcan Dericioğlu Crowell & Moring LLP Dericioğlu & Eren Law Office Denmark 18 United Kingdom 53 Hanne Kirk, Frederik Tram and Lasse Søndergaard Christensen David Taylor Gorrissen Federspiel Hogan Lovells France 22 United States 61 Marie-Emmanuelle Haas Dickerson M Downing ME Haas Law Offices of Dickerson M Downing Germany 28 Brigitte Joppich Brigitte Joppich, Rechtsanwaltskanzlei Peter Müller BPM legal 2 Getting the Deal Through – Domains & Domain Names 2017 © Law Business Research 2017 PREFACE Preface Domains & Domain Names 2017 Fourth edition Getting the Deal Through is delighted to publish the fourth edition of Domains & Domain Names, which is available in print, as an e-book and online at www.gettingthedealthrough.com. Getting the Deal Through provides international expert analysis in key areas of law, practice and regulation for corporate counsel, cross-border legal practitioners, and company directors and officers. Throughout this edition, and following the unique Getting the Deal Through format, the same key questions are answered by leading practitioners in each of the jurisdictions featured. Our coverage this year includes new chapters on Argentina, Denmark, the Netherlands and Russia. Getting the Deal Through titles are published annually in print. Please ensure you are referring to the latest edition or to the online version at www.gettingthedealthrough.com. Every effort has been made to cover all matters of concern to readers. However, specific legal advice should always be sought from experienced local advisers. Getting the Deal Through gratefully acknowledges the efforts of all the contributors to this volume, who were chosen for their recognised expertise. We also extend special thanks to the contributing editor, Flip Petillion of Crowell & Moring LLP, for his continued assistance with this volume. London May 2017 www.gettingthedealthrough.com 3 © Law Business Research 2017 Crowell & Moring LLP GLOBAL OVERVIEW Global overview Flip Petillion Crowell & Moring LLP Over the past few years, the internet’s naming system has been The number of domain name registrations is expected to grow undergoing a profound change, initiated in June 2011 when the significantly. Monitoring and contesting domain name registrations Internet Corporation for Assigned Names and Numbers (ICANN) will grow proportionately. started a programme to allow organisations anywhere to apply for a With over 1,200 of the new gTLDs being launched without any new generic top-level domain (gTLD). Now, in addition to .com, .fr major restrictions, unprepared brand-holders will be facing the or .be, you can find domain names under top level domains (TLDs) headache of formulating a strategy that balances the opportunity the including keywords (.music), cities (.paris), industries (.bank) and evolution of the internet brings with the threat of cybersquatting and brands (.yahoo). ICANN received over 1,400 new gTLD applications ultimately reputational damage to their brands. It would be foolhardy in 2012 and plans to open further application rounds in the future. We for any brand, irrespective of how deep its intellectual property pockets, are now five years into the programme, with the number of TLDs now to be expected to register its trademarks in every one of the 700+ open operational over 1,200. Yet, despite the fact that more than a third TLDs. While we did see some brands follow this strategy when the first of gTLD applications are still being processed, there are calls from dozen or so were released in January 2014, it soon became apparent some quarters for a next round of applications; some even call for a that there was no need for registrations in each and every one – an permanent window. Companies such as Twitter – which let pass the organisation really did not need to proactively own a .bike, .plumbing 2011 round – are among the brand owners already lining up for this and a .kitchen unless it really was operating across many verticals. future internet naming expansion. With internet fraud reaching new The concerns of brand-holders were heard and a number of highs, many brands see the opportunity to control their link to the measures were put forward to protect brand-holders’ digital assets root zone of the global internet as a well-justified security investment. when the programme moved into the launch phase in 2013. This fourth What this means for online branding, and indeed the internet naming edition of Getting the Deal Through – Domains & Domain Names is system as a whole, remains to be seen. Early indications, however, are meant to guide aggrieved parties in the gTLD and domain name sphere that change is inevitable. Key in barclays.com and you are redirected to and help them vindicate their interests through domain name disputes, home.barclays. Learn about BMW’s plans for the future of automobiles both in court and through alternative dispute resolution procedures. at next100.bmw. Social causes are also capitalising on the easier-to- We focus on ICANN’s rights protection mechanisms regime (including remember naming conventions possible with new gTLDs; for example, the Trademark Clearinghouse (TMCH) and the Uniform Rapid the autism research funded by concerts is promoted at autism.rocks. Suspension (URS)). At the same time, internationalised domain names – domain Whereas the URS does not seem to have become very attractive, names written in non-ASCII characters such as Cyrillic or Pinyin – are one of the most successful instruments put in place was the creation also now available. While still presenting some technical challenges (in of the TMCH. ICANN stipulated that the main purpose of creating other words, universal acceptance) this development sets the scene for a central database of trademarks was to enhance the protection of the billions of non-native-English internet users to access websites in intellectual property. A total of nine applicants applied to run the their native languages. service, with Deloitte eventually being chosen to build the central When the new gTLD programme moved from concept to reality repository that every new TLD registry would have to connect to and in 2011, a significant number of brand-holders expressed concern provide authentication and validation services. The TMCH would over the lack of attention for the protection of their digital assets. provide an early warning system for trademark-holders should Cybersquatting was a growing problem for organisations within the someone attempt to infringe their intellectual property during the 300 or so existing TLD names at the time, with the general feeling that initial registration phases of each TLD. the domain name industry as a whole was not doing enough to prevent While the current number of valid objects in the TMCH is intellectual property abuse and infringement. The introduction of significantly less than the estimated number, it has proved to be new gTLDs indeed brought new challenges for brand-owners and effective in preventing cybersquatting and intellectual property abuse other organisations, whether they have applied for a gTLD or not. in the Trademark Sunrise application period. The early warning system The following are only a few of the questions that the introduction of of presenting a potential breach of trademark notice to would-be new gTLDs raises: what should you do if a company has applied for a applicants in this initial registration phase has proved to be over 90 per gTLD that is identical or confusingly similar to your brand or business cent effective (ie, only one in every 10 domain names is registered once name? What should you do if a competitor has applied for a gTLD the warning notice is displayed). Any organisation that has utilised the that captures your industry? When should you consider registering TMCH essentially gets a first-mover advantage in securing its digital domain names in the new gTLDs? Can registration of domain names assets. The opportunity to get one step ahead of the competition is of resembling your own brand or existing domain names (in other TLDs) paramount importance to some brands and that is the opportunity the be blocked in a new gTLD? TMCH delivers.