Domain Names

Domain Names

Every Internet site has an IP address.  This is represented in characters and numbers.  In the early days of the Internet, search engines focused mainly on domain names.  Domain names are visible Internet addresses, for example, Ireland.com.

In the early days of the internet and in the mid to late 1990s cybersquatting became a notorious practice.  Persons registered domain names relating to well-established companies and businesses, for the purpose of later selling the domain name to the company or business concerned.

As search engines have developed, the importance of the domain names has declined.  However, they remain prospectively valuable, particularly where they carry the name of a business.


Internet Corporation for Assigned Names and Numbers (ICANN)

The Internet Corporation for Assigned Names and Numbers is a not for profit body that is responsible for coordinating the maintenance and methodologies of several databases, with unique identifiers, related to the namespaces of the Internet. Much of its work concerns the Internet’s global Domain Name System.

Its work includes policy development for internationalization of the DNS system, introduction of new generic top-level domains (TLDs), and the operation of root name servers. The numbering facilities ICANN manages include the Internet Protocol address. spaces for IPv4 and IPv6, and assignment of address blocks to regional Internet registries. ICANN also maintains registries of Internet protocol identifiers.


Top Level Domain Names

There are two principal categories: generic domain names and country domain names.  An International Standards Organisation (“ISO”) standard defines (top level) country codes for domain names. Each address corresponds to a numeric IP address.

For example, Ireland.”.ie” applies to Ireland and “. co.uk” applies to the United Kingdom.  In addition, there are a number of well-established generic international top-level domains; “.com” (for commercial organisations), “.org” (for non-profit organisations” and (“.net” (originally for infrastructure and network development companies).

International practice has emerged around the use and registration of domain named. In the case of country domain names, it is necessary to register with the domain name body/authority in the relevant country.  The practices of countries differ, in relation to the registration of domain names.  Other countries domain name registrars have less onerous requirements.


ComReg and Irish Domain Names

ComReg, the Communications Regulator, has the power to regulate the “.ie” domain name.  It may nominate a registering body or designate an authority. It may designate criteria by which a name may be granted or refused.  COMREG has the power to make regulations in relation to its criteria. A right of appeal may be allowed.

The Communications Regulation (Amendment) Act 2007 provides for the registration of the .ie domain name.  The ‘ie’ domain name is the top level of the global domain name system assign to Ireland, according to the two letter code in the specified international standard in relation to country codes.

The regulatory objective is to facilitate easy comprehension, fairness, transparency, avoidance of deception, the promotion of fair competition and public confidence in relation to the use of the domain name.

ComReg may designate the registration authority and renew its authority as such from time to time. ComReg may prescribe conditions and circumstances under which an application for renewal or registration of the domain name may be granted or refused.  It may specify fees payable.  It may set out the circumstances in which revocation of registration may be allowed.  It may confer a right of appeal.


ComReg Regultory Powers (Unused)

A person may not use an ‘ie’ domain unless the name is registered in accordance with regulations made under the Act.  The Commission for Communications Regulations may make regulations after consultation with the Minister and other public bodies as it sees fit.  Regulations may

  • provide for an entity as authorised register of ‘ie’ domain names;
  • prescribe the form and manner of application;
  • prescribe the circumstances in which, the ‘ie’ domain name may be registered;

In order to meet the expenses incurred by the Commission in performing its function as the regulator of ‘ie’ domain names, the Commission may impose a levy on the entity authorised to register the names.  There are provisions for payment and recovery after levy.  The Commission is to have access to all Internet ‘ie’ domain name databases and associated records.  The Commission has power to designate on an interim basis the registration authority for the ‘ie’ domain.


Regulations

Regulations may provide for the grant and renewal of registration.  They may set out circumstances in which an application for registration may be refused.  The authority may be given power to revoke the registration in specified circumstances.  No regulations have been made by the Commission for Communications Regulation.

Regulations may provide for an appeal against the refusal of registration or revocation.  Procedures for the hearing and determination of the appeal may be set out.  There may be provision for fees.

The regulations shall provide persons who have registered ‘ie’ domain names before the regulation came into force, taken to have complied with them.  Contravention of a regulation is an offence, which may be prosecuted summarily with a fine of up to €5,000.


IE Domain Registry Limited (IEDR)

Irish domain names are administered by a company IE Domain Registry Limited.  IEDR is the registration authority. It is the registration authority.

IEDR operates on the basis its own internal procedures. No regulations have been made by the Commission for Communications Regulation. As it is exercising a public function, it is subject to judicial review on the basis of legality, exceeding jurisdiction and unfair procedures etc.

An existing domain name which has an established value and use, cannot be arbitrarily taken away by the registration company.  There would have to be a very good reason and proper procedures would need to be followed to establish that this reason applied in the circumstances.


IEDR criteria

IEDR publishes its own requirements for registration the “.ie” name.  The registration of “.ie” requires connection with Ireland (including Northern Ireland). IEDR requires that an applicant be resident within the island of Ireland and demonstrate a real and substantial connection with Ireland.

Formerly it also required a separate link to the name, such as a business name as a pre-condition of registration.  A link and entitlement to the registered name was required. This might be a link to the name of an existing business or a personal name.  Generally, persons could  register their own name if it was available. Traders could generally register their registered business names. Registered companies could generally register their corporate name.  From March 21st, 2018, the requirement has been removed.


Other Registries

The global domain name system is administered by ICANN in the United States.  There are a number of registries of domain names.  Most countries have a characteristic domain name, corresponding to the country’s name.

The “.com” domain name is operated by VeriSign Global Registry Services. It also operates the “.net” domain name.     It sells domain names through intermediaries.  It sells names on a first come first served basis and has minimal criteria for registration

The ”.info” domain is operated by Afilias Limited.

The “.org” domain is operated by Public Interest Registry.

Nominet UK is the .uk domain name registry in the United Kingdom. Most members are internet service providers who are also registrars. Registrars are authorised by Nominet to register and update domains on behalf of customers. Nominet operates a Dispute Resolution Service.


European Domain Name

The “.eu” domain name is administered pursuant to EU legislation.  It sets out who may enter a domain name in the .eu registry. The following are qualified

  • an undertaking having a registered office, central administration or principal place of business within the EU;
  • an organisation established within the EU;
  • a natural person resident in the EU.

The “.eu” domain name, in broad terms, is registered to applicants on a first come, first served basis.  The legislation contains provisions which seek to avoid abuses.  There is provision for a revocation in respect of speculative and abusive registrations.

The EU regulations provide criteria broadly similar ICANN / WIPO dispute resolution procedure in relation to the .eu domain name registry.   An alternative dispute resolution procedure applies.The “.eu” registry may select providers of alternative dispute resolution services.  They must be reputable bodies, with appropriate expertise. They must act in an objective, transparent and non-discriminatory manner.


Domain Names Disputes

Use of a domain name may constitute grounds for passing off or breach of a trademark.  In this case, the usual legal remedies of damages and injunction may be available. The registration of a domain name does not immunise the registrant from a claim. Indeed, it may be the basis for a claim.

The World Intellectual Property Organisation has developed a Uniform Domains Name Dispute Resolution Policy.  Many country domain providers and most of the generic domain providers designate this procedure for non-judicial “alternative” dispute resolution of domain name disputes.

Domain names are a relatively recent development and there is no settled international law or treaties governing them.  The applicant must generally show that the respondent has no legitimate right to use the name and that it has been registered in bad faith.  An appeal to Court may be provided, although this is unusual.


WIPO Procedure

The holder of a trade name who believes that there has been a breach of registration criteria by reason of the use by another of a domain name may commence proceedings under the procedure.  The procedure works by the relevant registry organisations subscribing to the dispute procedure and agreeing to give effect to the outcome.

The decided cases and the principles on which the decision has been made are available on line. The domain name may be ordered to be transferred or kept.  No compensation or damages may be ordered.


Confusingly Similar

The principal dispute resolution criteria are as follows

  • that the name is confusingly similar to a trade mark;
  • that the name holder has no legitimate interest in the name and the name was registered in bad faith.

The complainant must show that the name is identical to or confusingly similar to a name in respect of which, he has rights. It is enough that the name is potentially confusing.  It need not be proved that persons were actually confused.

A registered trade mark or trade name is not necessary.  Common law rights, which would be protected by the law relating to passing off, are sufficient.  They will subsist where there is any significant trade.


Legitimate Interest

A person may establish a legitimate interest,

  • by prior use of the name in connection with goods or services or by demonstrable preparation for the same;
  • by being known commonly by the name, even in the absence of established intellectual property law rights in respect thereof;
  • a legitimate, non-commercial or fair use of the name, without intent to mislead or harm the reputation associated with a name for which a right is recognised or established under national or EU law.

Bad Faith I

If the user is not using the name for commercial use, the following may be grounds to show bad faith use:

  • that the name was registered for the purpose of selling or renting it to the complainant who holds a trademark or to a competitor, for monies in excess of its cost;
  • that the name was registered in order to prevent a trade mark owner from registering a corresponding name;
  • that the registration is primarily for the purpose of disrupting business;
  • that the respondent intentionally sought to attract for commercial gain, internet users to its site or other location by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website or location or as to products or services at the website or location.

Registration of a business or company name by itself would not generally be sufficient to give a legitimate right or interest in the above context.

Bad faith may be shown where the person who has registered or sought to register was aware, or must have been aware, of the existing name and made attempts to obscure his identity.

Bad faith may be shown by active steps or passive steps, where there is no conceivable possible basis for the legitimate use of the name.  Seeking to sell the name to a person having a legitimate connection to it tends to constitute bad faith.


Bad Faith II

Bad faith may be shown where circumstances indicate that the domain name was registered or acquired, primarily for the purpose of selling, renting or transferring it to a person or entity who holds rights or a legitimate interest in relation to it.  Bad faith may be shown if the name is a personal name, for which no demonstrable link exists between the name holder and the registered name.

Bad faith may be shown if the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor.  It may be shown if the name was intentionally used to attract Internet users for commercial gain to the holder of a name, by creating a likelihood of confusion with a name or right which is recognised or established under domestic or EU law. The likelihood of confusion may arise as to the source, sponsorship, affiliation, endorsement of product or service concerned.


IEDR Dispute Mechanism

The Irish ERDU dispute resolution procedure is similar to the standard uniform dispute resolution procedure under the Uniform Domain Name Dispute Resolution Policy described above. Persons who register, submit to the procedure in the event of a dispute, which is before an independent and impartial panel. It uses the WIPO arbitration process.

The complainant must establish that the domain name challenged is identical or misleadingly similar to a protected identifier, in which the complainant has rights.  He must establish that the registered person has no legal right nor legitimate interest in respect of the name and that the domain name has been registered or is being used in bad faith.


EU Dispute Resolution

The complaint procedure may be initiated, where the name is identical or confusingly similar to a name that is recognised or established under national or EU law.  This includes registered intellectual property rights and unregistered trademarks, trade names, business identifiers, company names, family names and distinctive titles of protected literary and artistic works.

To have a legitimate interest in the name, it is generally sufficient to show that the user before having notice of the complaint, that the respondent had used or planned to use the name in a legitimate way, the name corresponds to a name by which the respondent complainant party is known or that he is making fair non-commercial use of the name.


References and Sources

Irish Books

EU Data Protection Law Kelleher & Murray           2018

Information & Technology Communications Law Kennedy & Murphy         2017

Social Networking           Lambert               2014

Law Society PPG Hyland Technology & Intellectual Property Law                 2008

Information Technology Law in Ireland   2 Kelleher & Murray       2007

Data Protection Law in Ireland: Sources & Issues 2 Lambert 2016

Privacy & Data Protection Law in Ireland                Kelleher               2015

Data Protection: A Practical Guide to Irish & EU Law         Carey    2010

Practical Guide to Data Protection Law in Ireland A&L Goodbody 2003

Contract Law in an Electronic Age Haigh 2001

Contract law McDermott 2nd ed 2017

EU and UK Texts

Cover of Getting the Deal Through: e-Commerce 2018 Robert Bond 2017

EU Regulation of e-Commerce: A Commentary Edited by: Arno R. Lodder, Andrew D. Murray 2017

Butterworths E-Commerce and IT Law Handbook 6th ed Jeremy Phillips 2012

Internet & E-commerce Law, Business and Policy Internet & E-commerce Law, Business and Policy 2nd ed Brian Fitzgerald, Anne Fitzgerald, Gaye Middleton, Yee Fen Lim, Timothy B Beale 2011

E-Commerce and Convergence: A Guide to the Law of Digital Media E-Commerce and Convergence: 4th ed Edited by: Mike Butler 2011

Blackstone’s Statutes on IT and e-commerce Blackstone’s Statutes on IT and e-commerce 4th ed Edited by: Steve Hedley, Tanya Aplin 2008

E-Commerce Law E-Commerce Law Paul Todd 2005

A Practical Guide to E-Commerce and Internet Law 2nd ed Osborne Clarke 2005