Companies have traditionally rushed to register their domain names in the generic ‘.com’ hierarchy with less concern for local country-level domains. Now, with the shortage of new .com names, the trend is increasingly turning to country-specific registrations. Alex Wade introduces the implications for the trademark owner.

In the world of e-commerce, the domain name has become a critical business asset, a highly visible element of a company’s brand that extends worldwide. But whereas generic top-level domains (gTLDs), such as .com, have proved most popular in the past, many rights holders are now recognising the importance of ccTLDs (country code top-level domains) when it comes to ensuring global commercial presence and guarding their brand against infringement.

There are now 248 countries and territories around the world accepting domain name applications with their own ccTLDs, and further country and territory extensions are in their early stages, most notably the European Union’s .eu. In some cases, the choice of a ccTLD, such as .bz (Belize), .ie (Ireland), .mx (Mexico) and .ws (Samoa), may be prompted because a gTLD is already taken – either innocently or by a cybersquatter, but many companies opt to register both gTLDs and ccTLDs in order to improve their communication with foreign or national customers, and to ensure an easily recognisable brand at both a global and local level.

Ensuring a local presence
As David Engel, a specialist in media and Internet litigation with Addleshaw Goddard, explains, one of the most compelling reasons for the emergence of what could prove to be a trend in favour of ccTLDs is marketing: ‘A large multinational may have distinct national franchises, or a company may be associated predominantly with one country. In either case – in both national and international markets – it may be that it is sensible for the branding as a whole, including the domain name, to focus on the country of origin as well as to register the gTLD domain.’

If a company registers a ccTLD too late and the domain name is no longer available, it can run the risk of allowing others to profiteer from its brand

An example might be a company such as Ford seeking a number of ccTLDs in its target markets to avoid being perceived as a monolithic US conglomerate, or, conversely, a small-town business owner in Brittany, France, seeking to maximise their local presence with the .fr ccTLD.

Protecting against piracy
If a company has a market presence in certain countries, the registration of the relevant ccTLDs – whether for trademark, brand name or products and services – can also guard against problems further down the line. If a company registers a ccTLD too late and the domain name is no longer available, it can run the risk of allowing others to profiteer from its brand or be forced to embark on a costly battle to secure the domain name from alleged cybersquatters.

The Internet Corporation of Assigned Names and Numbers (ICANN) developed a procedure for dealing with cybersquatting problems in 1999, with the introduction of the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP is available for the gTLDs and an increasing number of ccTLDs, but certainly not all. Some ccTLDs have their own dispute resolution procedure, such as the .uk’s Nominet UK’s Dispute Resolution Service (DRS), but many others are yet to be established.

The formalities for registering a ccTLD are different depending on the territory, and registration may not necessarily be available for a business in every jurisdiction of the 248 ccTLDs now in existence. Some countries, such as France and Germany, require the company to have a local office subject to that country’s jurisdiction and IP laws, while others may reserve certain extensions to national government or residential bodies. Trademark counsel will be able to advise of any specific formalities required, and highlight the alternatives available.

As a general rule, however, the registration of a ccTLD is an important step in establishing a web presence in a chosen territory. Businesses would be wise to look into all the options when planning a domain name strategy to match their international e-commerce requirements.

For more information on the latest trends in domain name management, please e-mail domainnames@cpaglobal.com  

This article first appeared in IP Review, issue 13

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