domain name

Brief : DOMAIN NAMES: THE POTENTIAL CONFLICT OF DIFFERENT DOMAIN NAME SYSTEMS

A website can only be accessed if a system is able to link the URL entered by a user in his or her browser to the server of the website in question. This is called the Domain Name System (DNS). The DNS operates as an intermediary system through sending a request on the Internet in order to make the link between the address entered in the browser by the user and the actual access to the site. This is the reason why the DNS is often compared to a telephone directory as it allows to translate the names given by the user into names that are intelligible for machines.

When everything is set up properly to ensure that the DNS can play its role as an intermediary, it is sufficient to just have a device with Internet connection to access the site.

But currently some registrars offer domain names that don’t rely on the traditional DNS. Instead, they use technologies such as blockchain.

In order to be accessible, these domain names require the installation of specific tools such as particular browsers or plug-ins. These constitute additional costs for potential buyers who simply want to obtain a traditional domain name for their website.

 

These offers present two fundamental risks. The first issue relates to the communication of the Internet regulatory authority ICANN of November 24, 2021. It concerns the risk of confusion for consumers. In fact, it is not easy for the average consumer to make the distinction between these two types of offers whereas the purchase of these different domain names covers very different realities.

The second issue of this alternative resolution system consists of the risk of conflicts between domain names that would be registered through the traditional DNS system and those based on one of the new non-DNS systems.

These possible conflicts include name collisions. Hence, this phenomenon might intensify with the creation of parallel networks. This might occur when the system being used to translate names being entered by users into intelligible names for machines – in this case a non-DNS system – is sent to a DNS system, for which the address corresponds to the address of a different website.

In that case, the user would be redirected to the wrong domain name. These uncertainties could give rise to legal conflicts in the coming years if the new systems become more important.

 

 

Sources: ICANN Blog, Buyer Beware: Not All Names Are Created Equal, November 24, 2021, A. Durand
ICANN, Frequently Asked Questions: Name Collisions for IT Professionals

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Brief : The AFNIC 2020 annual report

The digital transition of small and medium-sized enterprises was the AFNIC’s 2020 target – a year marked by the health and economic crisis. This target was reflected in the 2020 Annual Report of the French association. The report was released in June 2021.

 

In fact, there was a growth of 7% of <.fr> registrations with a total reach of 3,670,372 registered names at the end of 2020. The reason of this growth were the AFNIC’s efforts to make the registration and use of <.fr> more accessible, safe and proximate.

 

Given the increasing need for digital transformation, small and medium-sized enterprises had little choice but to develop and exploit Internet activities. The AFNIC organized a massive promotion of a secure and advantageous online presence via its Réussir-en.fr device. Thanks to this initiative, digital transitions took place more efficiently and more often.

 

In addition, the AFNIC signed a partnership with the DGCCRF (Directorate General of Competition, Consumer and Repression of Fraud). The aim of their partnership was to transmit the list of corresponding domain names to the DGCCRF on a daily basis, in order to block sites that supported or facilitated deceptive marketing practices. The general idea was to create a climate of trust.

 

Finally, the AFNIC Foundation took measures, in the context of the worldwide health crisis, to support local initiatives. The foundation aimed to reduce the distance with the digital environment and to restore the social connection, in particular through: purchasing computers for schoolchildren, purchasing sound equipment for EHPAD residents or setting up dematerialized accompaniments in order to find jobs online.

 

The AFNIC succeeded to achieve its 2020 goal to ensure the digital transition of small and medium-sized enterprises through making <.fr> safer and more accessible, through massive promotion and through supporting local initiatives to reduce the distance with the digital environment and to restore the social connection.

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« .au direct »: the new Australian namespace that will launch on March 24, 2022

On the 24th of March 2022, a new name space will launch in Australia: “.au direct”.

It is a new name space that enables Australian citizens, permanent residents and organizations registered in Australia to register domain names directly before the .au.

Instead of registering and using domain names in the traditional namespaces such “com.au”, or “org.au”, “net.au”, “gov.au”, “edu.au” etc., Australian internet users will be able to opt for simpler and shorter domain names directly ending with “.au”.

In fact, the new name space enables two application possibilities. You can register a completely new “.au direct” name that isn’t registered in any existing .au namespace. The second option is to register the exact match of an already existing .au domain that you hold.

Where to register your “.au direct” domain name and at what price? 

From March 24, 2022, you will be able to simply register new or matching “.au” domain names through participating auDA accredited registrars. Bearing in mind that the rule of supply and demand applies, the registration prices vary between different registrars. It is likely that a potentially popular name is more expensive than an ‘ordinary’ one. Nonetheless, the official administrator of Australia’s .au top level domain (the auDA”) sets the wholesale price for all .au domain names. Whether you opt for a “com.au”, “net.au” or “.au direct”, the wholesale price will be the same.

What are the requirements?

First of all, you need to prove a verifiable Australian presence. Article 1.4 of the .au Domain Administration Rules provides an exhaustive list of 17 natural and legal persons that are considered to have an ‘Australian presence’. In short it concerns Australian citizens, permanent residents of Australia and organizations and companies registered in Australia. This Australian presence is thus the first requirement for any person or organization who wants to register a “.au directdomain name.

The second requirement regards the name itself. Although there are no allocation rules for the “.au” namespace, in the sense that you can freely choose any name, this doesn’t mean that there are no restrictions.

First, the name that you would like to register needs to be available. Considering the new namespace will launch in March 2022, the availability is not a problem (yet). But the ‘first come, first served rule’ applies so the risk of unavailability will be something to bear in mind.

Second, the name cannot be mentioned in the « reserved list ». Under the Licensing Rules, you can’t apply for a registration of a word, acronym or abbreviation that is restricted or prohibited under an Australian law or a name or abbreviation of an Australian state or territory, including the word ‘Australia’.

Finally, you can’t register a name that is deemed to pose a risk to the security, stability and integrity of the “.au” and global Domain Name System.

The second requirement consists thus of a negative requirement; you cannot register an unavailable name, nor a so-called reserved name.

How to register “.au direct” domain names?

Provided that the Australian presence and availability requirements are met, you will be able to register any new “.au direct” name via any participating auDA accredited registrar starting from March 24.

Furthermore, provided that these same requirements are met, Australian internet users will also be able to register the exact match of an existing .au domain that you already hold. However, this allocation process is a bit more complex. The .au Domain Administration Rules provide for a “Priority Allocation Process”. This process foresees a six-month “Priory Application Period” – from March 24 until September 20, 2022 – for holders of a “.au” name in another namespace (such as “com.au”, “org.au” or “net.au”) who would like to apply for its exact “.au direct” match.

For example, if you own the domain name “dreyfus.com.au”, you can apply for the registration of “dreyfus.au” within this period via an accredited registrar. If it appears that the requirements are met, you will get a priority status and you will be put on “Priority Hold for the Priority Application Period”. Through this status, you have the first opportunity to register the name which prevents third parties from registering it.

In some cases, there may be more than one applicant for the same “.au direct” domain name. For instance, if you hold the domain name “dreyfus.com.au” and a third party holds the domain name “dreyfus.net.au”, and you both want to register the “dreyfus.au” direct domain name, the “.au direct” exact match will be allocated according to the Priority Allocation Process.

A distinction is made between two priority categories. The first Priority Category regards names that are created on or before the 4th of February 2018. The second Priority Category regards Names created after the 4th of February 2018.

Under Article 1.9 of the .au Domain Administration Rules, Category 1 applicants have priority over Category 2 applicants.

In case there are multiple Category 1 applications, the name is allocated on agreement/negotiation between the Category 1 applicants.

Finally, if there are only Category 2 applicants, the name is simply allocated to the applicant with the earliest creation date.

As a final note, registering a “.au direct” domain name does not entail any negative consequences. You can always attempt to register your “.au direct” exact match because it has no consequences on your existing .au domain names. So, if you already own the domain name “dreyfus.com.au” and you want to register “drefyus.au”, the domain name “dreyfus.com.au” will not be affected by this registration and will continue to exist.

On the 24th of March 2022, the new “.au direct” namespace will thus launch in Australia.

This new name space that enables anyone with a verified connection to Australia, such as citizens and permanent residents of Australia and organizations registered in Australia, to register “.au direct” domain names. Instead of registering and using names in the traditional namespaces, it will be possible to opt for simpler and shorter domain names that directly ends with “.au”.

The first possibility is to apply for a registration of a new .au direct names that are not already registered in the .au registry.

The second possibility consist of registering the exact match of existing .au domain names. The allocation of these domain names is regulated by the specific provisions of the “Priority Allocation Process”.

About this topic…

.au direct update – .auDA WEBSITE

Reverse domain name hijacking

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The next round of application for gTLDs

Homme – réseau – internet - informatiqueIn 2013, ICANN launched a vast operation to remedy domain name saturation and promote competition by setting up new gTLDs. These new extensions have helped unclog the market for more traditional extensions such as “.com”.

With the next application window expected in 2022, many companies are already showing a strong interest in “.BRAND”, such as Uber, which reportedly announced it at an ICANN virtual meeting (as reported by a GoDaddy registrar).
The personalised extension has many advantages, such as trust, since the company only is able to allow the registration of a domain name in its “. BRAND”. It also shows the willingness of companies to invest in order to enhance their trademarks.

 

On the other hand, other companies, due to lack of use or for other reasons, such as the restrictions that weigh on any registry, decide to terminate their “.BRAND”. In May, June and July 2021, four companies proceeded to this termination. This is what the recent update of the ICANN website shows:

 

• The “.SWIFTCOVER” for the company Swiftcover of Axa.
• The “.RMIT” for the company Royal Melbourne Institute of Technology
• The “.DABUR” for the company DABUR India Limited
• The “.LIXIL” for LIXIL Group Corporation

In 2012, many big companies applied for their “.BRAND”. It should be noted, however, that this application has a significant cost. In addition to the technical and consulting fees, the amount to apply was US$ 180,000 per application in 2012.

With the challenges raised by the security on the Internet and the obligations that weigh on companies, especially to protect the data of their customers, it is very likely, despite these costs, that the next round will be a real success. Many “.BRAND” are successfully used today, both from a marketing point of view and in terms of the security they provide to Internet users.

 

About this topic…

 

How to prepare for the next round of applications to the <.mark>?

ICANN Summit: the fight against DNS abuse, a GAC priority

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ICANN Summit: the fight against DNS abuse, a GAC priority

recommandationThe 71st ICANN Summit gave its GAC (Governmental Advisory Committee) the competence to take stock of the essential elements of its missions, reflected in its report of June 21, 2021. In the “Issues of Importance to the GAC”, several elements were highlighted.

1. The next round of new gTLDs allow companies to have a TLD in their name

 

Göran Marby, CEO of ICANN, recalled that strengthening competition and improving the opportunities of Internet users to benefit from their own identifiers is part of ICANN’s duty. The ICANN presented the ODP (Operational Design Phase). This is a system that provides information on the operational issues of the project and aims to implement advice to make the procedure more effective.

But on the other side of the coin, there are also fraudsters amongst the beneficiaries. This is the case, for instance, regarding new gTLDs that were launched on the market almost ten years ago (like <.icu> or <.guru>).

 

 

2. Addressing the issue of domain name abuse

 

The issue of DNS abuse remains a flagship issue for the CAG, who describes the problem as a “priority”. DNS abuse is a term that refers to piracy cases where domain names are registered and used for fraudulent purposes such as phishing. The idea of the Framework on Domain Generating Algorithms (DGA) associated with Malware and Botnets was created. The objective of this framework is to place registries at the center of the fight against these abuses, and to encourage them to prevent the blocking of domain names from DGA’s. These DGA’s are algorithms used to generate a very large amount of domain names that can serve as meeting points between control servers and the command, allowing botnets to thrive more easily.

 

3. Reliability of Data

The GAC highlighted the importance of the correctness and completeness of domain name registration. Data reliability is an important aspect to ensure the prevention of – and fight against DNS abuses. It recalls the obligation of registers and registration offices to verify, validate and correct data. One of the objectives is to respond to the pitfalls of these data in a timely and efficient manner. The GAC specified that this should not only concern compliance with the GDPR but that it should include all information relating to domain names.

 

4. Accessibility of data

The ODP for Stage 2 of the EPDP has been put on the table. The purpose of this ODP is to inform interested parties on the question whether the SSAD (System for Standardized Access/Disclosure) works in favor of the interests of the ICANN community, especially in view of its impact in terms of costs. For the record, via the SSAD, it is possible to get information about requests that demand to lift the anonymity on certain domain names.

Phase 2A of the EPDP (Accelerated Policy Development Process) was discussed after the release of the EPDP Phase 2A Initial Report on the “Temporary Specification” (which is a new version of the Whois). This report provides guidance on how to publish registration information on companies that is not protected by the GDPR as well as email addresses for those who are anonymized.

 

5. Consumer protection

Finally, the recommendations of the CCT (Competition, Consumer Trust and Consumer Choice Review) were addressed. Among the recommendations that the GAC would like to see implemented was a pro bono assistance program as well as the recommendation concerning the identification of party chains that are responsible for registering domain names.

The ICANN’s report of June 21, 2021 highlighted several important elements. The fact that new gTLDs allow companies to have a TLD in their name engenders both benefices and dangers. It underlined the issue of domain name abuse and the importance of the correctness and completeness of domain name registration data, as well as the importance of accessibility of data and the need for consumer protection.

 

 

Dreyfus law firm

 

 

 

About this topic…

 

Attempted reverse domain name hijacking is an abuse of the administrative process

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The reputation of the trademark is not enough to prove typosquatting

Ordinateur brainstorm meeting applicationWhen you are the owner of a well-known trademark and you detect a domain name that is almost identical to it, and moreover on sale for a substantial amount of money, it is tempting to consider that it is a case of typosquatting. However, it is essential to pay attention to details.

The Valeo Group

 

The Valeo Group, which specializes in the design, production and distribution of automobile components, and its affiliate, Valeo Services, have experienced this, after filing a complaint against the <valoservices.com> domain name registered in 2018, which was offered for sale for EUR 2288.

The applicants were respectively registered in 1955 and 1987 and the name VALEO was adopted in 1980. Together they have 59 research centers and 191 production sites. They have received numerous awards for their products. They also own several word marks based on the “VALEO” sign, notably in France, the European Union, China and the United States, and also hold semi-figurative marks including the name “VALEO SERVICE”. Finally, they operate the domain names <valeo.com> and <valeoservice.com>.

The respondent, who answered the complaint, describes himself as an engineer based in the United States who has a large portfolio of generic domain names.

The respondent believes that there is no likelihood of confusion between the disputed name and the complainants’ trademarks. It explains that “valo” means “light” in Finnish and that a search on the sign “VALO” on Google or on trademark databases does not reveal any trademark including “VALEO”.

While these arguments, especially the second one, are interesting, they have no place in the analysis of the likelihood of confusion between a trademark and a domain name, which consists of a simple side-by-side analysis of the two names. Since the omission of the letter “E” can be perceived as a spelling mistake, the expert considers that there is indeed a similarity between the signs.

After this first step, the expert does not address the issue of the defendant’s rights or legitimate interest, but directly addresses the issue of bad faith. On this point, the applicants state that their trademarks are very well known and rely on decisions of the Chinese and European Trademark Union Offices as well as on old UDRP decisions.

The Respondent reiterates its arguments regarding the use of the Finnish language and its clearance searches. The respondent states that it has several domain names in a foreign language or containing the term “service”.

The panelist is skeptical about mixing Finnish and English in a domain name but considers the respondent’s research that shows that a query on “VALO” does not lead to the complainants and the fact that many companies around the world are named VALO or have adopted a name beginning with VALO. Therefore, the complaint is dismissed. However, the expert points out that it is always possible to turn to a more appropriate procedure. The Panel also rejects the Respondent’s request to characterize the complaint as a reverse domain name hijacking.

Thus, it is advisable to put oneself in the shoes of the reserving party to determine whether he could have had knowledge of the trademarks, in particular by taking into account his country of origin and the field of activity in which the trademark is renowned. In this respect, the expert notes that the car parts sector is relatively discreet.

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.

 

 

About this topic …

 

Why is the well knownness of an earlier trademark not enough to qualify bad faith ?

 

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Podcast – You, Me & IP : Intellectual property, Cybersecurity and malicious Domain Names: how to combine them?

podcastWe are pleased to present the “You, Me & IP” Podcast – Episode 4 in which Nathalie Dreyfus, founder of Dreyfus & Associates is the guest of Carlos Northon, founder and CEO of Northen’s Media PR & Marketing Ltd.

“Intellectual property, Cybersecurity and malicious Domain Names: how to combine them?”

 

If you want to know more about intellectual property issues and discover a rich and experienced vision on the subject, you can also read the article Nathalie Dreyfus wrote for “The Global IP Matrix”.

 

ABOUT THIS TOPIC…

 

How to protect your brands in the digital age?

 

 

 

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Reverse domain name hijacking

domain name administrative processReverse domain name hijacking constitutes an abuse of procedure. On this topic, the WIPO issued on April 4, 2021 a decision reminding Complainants of their failings: it was their duty to proceed to relevant checks before initiating the complaint and to build their case properly. The examiner was all the more severe given that Complainants were represented by counsel.

The complaint in question was filed by three applicants.

 

 

First Complainant is an Indian company notably specializing in the manufacture and sale of sanitary products and kitchen appliances. First Complainant was originally known as Hindustan Twyfords, but later changed its name to HSIL Ltd. in 2009. Second Complainant, Somany Home Innovation Limited, was incorporated in 2017. It manufactures and sells, among other goods, air and water purifiers, water heaters, air coolers. Like Second Complainant, Third Complainant, Brilloca Ltd, results from the split of First Complainant.

Having detected the registration of the domain names <hsil.com> registered on November 16, 1999 and <shil.com> on December 9, 1999, Complainants filed a complaint with the WIPO Arbitration and Mediation Center to request the transfer of the domain names.

 

 

Respondent is a UK registered company, established on October 7, 1998, which provides web development services to help small businesses gain visibility on the Internet, initially focusing on the health club and leisure equipment market. In addition to the main site « health-club.net », Respondent has registered a number of short acronymic domain names.

First Complainant owns trademarks for the sign « HSIL », the first of which dates from 2004. Complainants further argue that Somany Home Innovation is widely known by the sign « SHIL », the acronym that corresponds to its corporate name.

 

 

First and foremost, the panelist notes that the applicants have not submitted any evidence showing the use of the sign « SHIL » to the point of making it a distinctive identifier for their benefit. Therefore, the latter considers that they are in default concerning the proof of likelihood of confusion between the <shil.com> domain name and an earlier trademark in which they potentially have rights. On the other hand, the likelihood of confusion was recognized for the name <hsil.com>.

 

 

Then, regarding the issue of legitimate interest and/or rights in the domain names, the panelist takes into account the fact that Respondent registered the disputed domain names in 1999, before the alleged filing and use of Complainants’ « HSIL » and « SHIL » marks. As opposed to Complainants, Respondent has provided evidence to support its claims that the names were used as acronyms for « Sports / Health in London » and « Health / Sports in London ».

Besides, the disputed domain names were registered in 1999, many years before the filing of the HSIL marks and the registration of domain names containing « HSIL ». In addition, the Complainants have no trademark rights for the sign « SHIL ».

Also, Respondent has demonstrated a use of the disputed domain names in connection to a bona fide offering of goods and services.

 

The complaint is therefore dismissed.

In addition, the panelist found that the complaint constituted reverse domain name hijacking, an attempt to obtain a domain name by artificially proving infringement.

Complainants, who are represented by counsel, should have anticipated the weakness of their argument and the fact that the acronyms « Hsil » and « Shil » could not refer exclusively to them, as alleged in the complaint without any evidence.

The panelist also notes that Complainants tried to make it look like trademarks were rejected in India because of the « well-known status and enormous goodwill » acquired by their earlier marks. This, despite the fact that the defendant has proven that third parties have been able to obtain registration of trademarks for the sign « SHIL » in India.

 

The panelist also targets Complainants’ representative and denounces an « unfamiliarity with the UDRP » and raises the fact that the latter has listed the registrar as respondent simply because it had allowed the registration of an available domain name, even though it is not in its power to decide whether or not to allow a registration.

 

Source: WIPO, Arbitration and Mediation Center, April 4, 2021, Case No. D2020-3416, HSIL Limited, Somany Home Innovation Limited v. SHIL Ltd, Brilloca Limited v. GOTW Hostmaster, Get on The Web Limited, India

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What are the suggested modifications to the UDRP?

UDRP principlesFollowing the UDRP ‘s new gTLD program, new Rights Protection Review Mechanisms (RPM) have been implemented to protect trademark holders, such as the Uniform Rapid Suspension System (URS) procedure.

 

ICANN has now decided to address changes suggested by trademark holders and intellectual property experts regarding the UDRP. For instance, one of these suggestions is that a domain name should be considered abusive if it is registered OR if it is used in bad faith, instead of requiring that both these conditions are met. The idea is to lighten the burden of proof on the rights owner to take into account a more up-to-date reality. Another suggestion is to provide for an accelerated procedure in case of abusive conduct and to get a decision more rapidly if the defendant fails to respond to the complaint.

 

It has also been proposed to provide for a presumption of bad faith if the registrant has lost three UDRP complaints and to require any repeat offender to pay a response fee to defend the case. The central issue at this stage of the study is to understand the extent to which the UDRP principles should be changed in favour of trademark owners, while knowingt hat it may weaken the UDRP principles.

 

 

Sources:

Overview: The Rights Protection Mechanisms (RPM) Review https://newgtlds.icann.org/en/reviews/cct/rpm

Phase: 1 Initial Report of the Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process :

https://www.icann.org/public-comments/rpm-initial-report-2020-03-18-en

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The Vinci’s case: how to set up an effective domain name strategy?

Noms de domaine, stratégie, entreprise, VINCI

On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.

In 2019, the US news agency Bloomberg appealed a decision of the AMF’s sanctions commission. The hearing before the court of appeal will be held this Thursday. Bloomberg was sentenced to 5 million euros for relaying information from a false Vinci press release.

 

A fake press release from Bloomberg

The American news agency Bloomberg is accused of having disseminated, in 2016, false information about Vinci without having verified it.

On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.

The false statement also indicates that the chief financial officer was fired. Less than a minute later, between 4:06 p.m. and 4:07 p.m., Bloomberg picked up the information and disclosed it on his terminal.

This press release had even been signed with the name of the real person in charge of Vinci’s press relations, while referring to a false cell phone number.

In defense, the defendants point out before the commission that the tone, the absence of spelling errors, the careful layout, the exact references to certain directors of Vinci or to its auditors, the mention of the real spokesperson for Vinci as well as the plausibility of the foot of the press release, which contained a link to unsubscribe from the Vinci mailing list and alerted the recipient to the automated processing of data, mentioning the contact details of the real correspondent Cnil de Vinci , did not differentiate this press release from a real press release established by Vinci.

 

The domain name issue in the false press release

The only inaccuracies in the false press release: the domain name of the false Vinci site to which the press release referred and the false mobile phone number of the “media contact”.

The fraudulent press release was also received by AFP, which did not follow up after realizing that this document had been posted on a mirror website, very similar to the real site but with a separate address (vinci.group and not vinci.com).

 

How to protect your domain name?

Domain names represent an essential intangible asset for companies since they allow access to websites related to their activity. Now, protecting the domain names associated with the trademark or the business of the company has become almost as important to the company as the protection of its brands.

In addition, domain names are the preferred medium for cyber-attacks which calls for increased vigilance on the part of owners and Internet users.

 

Phishing, fake president fraud, identity theft, fake job offers, theft of personal or banking data, whaling… frauds are numerous and are constantly adapting to technological progress;

 

Fraud is facilitated by the very protective provisions of the GDPR, which prevent the direct identification of the domain name registrant; technical service providers tend to rely upon the provisions of the GDPR and the LCEN to justify their inaction and allow fraud to continue;

There is a great risk of damage to the company’s image and reputation. Such fraud also has a significant financial impact, given the risk of embezzlement and money laundering.

The AMF’s Guide to Periodic Disclosure for Listed Companies (dated June

To protect your domain name from cybersquatters or competitors, it is recommended to also register the domain name as a trademark in addition to the reservation of the domain name.

It is possible, before making a domain name reservation and trademark registration, to check its availability, to avoid conflicts between domain names, trademarks or corporate names.

Domain names are now an integral part of the international economic landscape. Like industrial property rights and traditional distinctive signs, they are instruments of competition and intangible assets of companies. It is of course essential to have it for anyone who wants to exist in a market.

But care must be taken not to come into conflict with one’s competitors by using, even in good faith, distinctive signs close to theirs. Conversely, it is also necessary to enforce its own distinctive signs by not allowing third parties to appropriate signs close to its own in order to offer the same or similar services.

 

How to mitigate the risks regarding domain names ?

– Proceed to an audit of the corporate trademark and the company’s flagship trademarks among domain names, in order to map the risks;

– Set up a 7/7 watch of the corporate trademark among domain names, and a 7/7 or at least weekly watch on the company’s trademarks dedicated to goods or services;

– Set up watches on social networks such as Facebook, Instagram, Twitter and LinkedIn;

– Proceed with the preventive registration of domain names in risky extensions (such as .COM, .CO, .CM, .GROUP);

– Take preventive action(s) against potentially dangerous domain names;

– Define procedures and set up a crisis management unit to quickly react to infringements in case of emergency;

– Draft or update the company’s domain name policy (registration procedures, compliance with legal obligations, best practices) to be shared internally and with the company’s service providers and suppliers.

Cyber ​​threats are more numerous and more complex and it has also become increasingly difficult to take action against registrants of disputed domains. More than ever, monitoring is required with the implementation of risk mapping and a defense strategy.

 

Dreyfus advise you in setting up the appropriate strategy to limit the risks related to domain names and to integrate industrial property assets in your compliance plans.

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