Domain name governance

Yvonne Pah , senior associate at leading Middle East law firm Al Tamimi & Company examining how once a domain name is secured it should be managed properly

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Domain name governance Companies need to take steps to maintain their domain name and IPR, says Pah.
By  Yvonne Pah Published  May 5, 2011

Registering a distinctive domain name is only the first step in effective domain name governance. Like trademarks, domain names must be protected.

Once a domain name is secured, it should be managed and administered properly by ensuring that selected individuals within the organization are given access to the account with suitable domain continuity plans in place. As this may pre-empt any abuse of account information. As an example, individuals with access to the account, may leave the organization without handing over the administrative details for the domain names. These people could assume control of the domain and may unilaterally change details or information pertaining to the domain name such as ownership rights of the account which can result in the company being held ‘to ransom'.

In as much as there is traditional trademark infringement where trademarks are used without authorization by the owner, similar principles apply in respect of domain names. Third parties unrelated to the owner of the website could obtain registration of a domain name which is identical or similar to either a domain name or trademark belonging to another party. Such activities are commonly referred to as ‘cyber squatting'.

In addition to cyber squatting, there is also a risk of ‘phishing'. This is designed to steal identities where users are deceived into disclosing personal data through websites, emails or phone calls. Where websites are used, the domain names are often similar to the legitimate websites, often incorporating trademarks belonging to the trademark owner and information from the legitimate websites.

The end result is that the look and feel of the deceptive website is similar to the legitimate website. Once users are deceived into interacting on deceptive websites, personal information is entered and disclosed into the system.

E-commerce in the Middle East, including the United Arab Emirates, is growing rapidly. This is reflected in the increasing availability of Arabic domain names in Saudi Arabia (.alsaudiah), UAE (.emarat), Egypt (.misr), Jordan (.alordon) and Palestine (.falasteen). The relevant authorities in Saudi Arabia and the UAE, SaudiNIC and .aeDA, are operating under the purview of the Saudi Arabia Communication and Information Technology Commission and UAE Telecommunications Regulatory Authority (TRA) respectively.  The UAE .aeda which regulates and operates the .ae domain names is also responsible for setting up and enforcing policies with regard to the operation of .ae ccTLD. It also facilitates disputes on domain names.

The choice of a domain name often takes into account ownership of and reference to a trademark already in use. This is reflected in the general eligibility criteria of the .ae domain name policy. The policy states that the grant of a domain name is not a grant for any intellectual property rights which are proprietary rights. Accordingly, the applicant for the domain name has to ensure they have the right to use the domain name and that it will not violate any 3rd party intellectual property rights. Where the domain name sought is classified as ‘restricted' such as ‘co.ae', ‘net.ae', ‘org.ae', ‘sch.ae', ‘ac.ae', ‘gov.ae' and ‘mil.ae', there is a positive requirement that the domain name should incorporate one of four criteria, a prior trademark registration being one of them. The existing domain name policy recognizes that trademarks are often taken into account when domain names are chosen.

The same principle is reflected in the .aeDA dispute resolution policy where recognition is given to the proprietary rights subsisting in a trademark which, as mentioned, is normally the element which a brand is built upon.

The .aeDA policy mirrors the Uniform Dispute Resolution Policy (UDRP) by ICANN where a third party, normally the trademark owner, would raise certain grounds for his complaint, for example such as that the domain name is identical or confusingly similar to his trademark in which he has rights, that the holder has no rights or legitimate interests in the name or that the name has been registered and or used in bad faith.

The .aeDA dispute resolution policy provides instances of what amounts to evidence of registration or use in bad faith. For example where the domain name holder secures the name for the purposes of selling, renting or transferring it to the trademark owner for an amount exceeding the cost directly related to the name. The domain name is secured to prevent the trademark owner from incorporating his trademark in a corresponding name.

The domain name has been secured primarily for the purpose of disrupting the business of a competitor, or where the domain name is used to divert users to that website by creating a likelihood of confusion with the complainant's trademark in terms of origins, affiliation or endorsement.

The .aeDA dispute resolution policy does not require that the complainant's trademark be registered. However proof of registration of the trademark in the UAE would be cogent evidence of the complainant's proprietorship in the trademark. This can be inferred from the evidence required of the domain name holder where he may show  his organization is commonly known by the domain name even if he has not acquired any rights in the trademark which forms or is part of the disputed domain name.

Reference is made to a dispute brought under the WIPO Arbitration and Mediation Center by the Abu Dhabi Future Energy Company PJSC, as the complainant against an individual, John Pepin, in relation to the disputed domain names masdarcity.com and masdarcity.net. It was taken into account by the panel that both the registered and unregistered trademark rights of the complainant where regard was also had to the commercial activities of the complainant upon which the trademark MASDAR was used in relation to.   In particular, the panel held ‘A complainant may assert unregistered trademark rights by showing that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning' may include the nature and extent of advertising, consumer surveys and media recognition'. Given that the .aeDA dispute resolution policy is similar to the UDRP, similar outcomes can be expected from similar disputes.

The panel also made reference to the common law trademark rights, however, common law is not applied in the UAE.

It is suggested that a local panel considers the statutory provisions under the Commercial Transaction Code which prohibits unfair competition where among others ‘a trader may not disclose such matters as are inconsistent with the reality regarding the origin or description of his goods, or any other matters pertaining to their nature'.. ‘nor may he resort to any other misleading means, with the intent thereby to usurp the customers of a  competitor trader; or else, he shall be liable for compensation'.

Trademark owners who have built a brand around their trademarks are able to protect these when used without authorization by another party within the context of domain name registered or disputed in the UAE. However, organizations should ensure that their ‘house is in order' when it comes to the administration of domain names. In this way, your business can achieve effective domain name governance.

Yvonne Pah, is a senior associate at Al Tamimi & Company

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