Unfortunately, registering a domain name in multiple foreign countries is not as easy as one would hope. Although the United States and some countries impose no restrictions on the registration of domain names, nearly half the countries with country specific domains, including many developed nations, impose important limitations on:
- who may register a domain name,
- what type of domain name may be registered, and
- how many domain names can be registered per applicant.
Most countries permit an applicant to register nearly every domain name the applicant applies for, so long as the applicant represents that neither the registration of the domain name nor the manner in which the domain name is directly or indirectly used infringes on the legal rights of any third party. In the event of a conflict between the domain name registrant and a third party intellectual property owner, it is the third party who bears the burden of enforcing its rights against the registrant.
Many countries have adopted ICANN's Uniform Domain Name Dispute Resolution Policy to deal with registrations of domain names that are identical or confusingly similar to trademarks if the registrant has registered the domain name in bad faith. That policy was discussed in our February 15, 2000 Internet Alert, and its application to various domain name disputes was discussed in our June 2, 2000, June 19, 2000 and September 13, 2000 Internet Alerts. The United States has also adopted the Anticybersqatting Consumer Protection Act to deal with registrations of domain names which contain or resemble well-known commercial names or names of individuals, with an intent to prevent others from using the domain name or to profit by selling the domain name to the owner of the trademark or the individual. That statute was discussed in our December 7, 1999 Internet Alert.
To protect against cybersquatting, some countries have adopted additional safeguards. Canada and Finland require domain names to be similar to the name or trademark of the registrant. Other countries, such as France, Italy, Hong Kong and Norway, try to protect owners of intellectual property rights by limiting the number of domain names a person or corporation may register.
The most problematic restriction on domain name registrations focuses on the identity of the registrant. Those restrictions vary, from a requirement in China and Finland that the domain name registrant also be registered in the country's trade register, to a restriction in Hong Kong and Norway that only a corporation or other legal person (but not a natural person) may register a domain name.
In a few countries where registration is generally unrestricted, possible exceptions still have to be taken into account. For instance in the United Kingdom, a company wishing to register a domain name under the second level domain .plc.uk or .ltd.uk has to be registered with the Companies House. Germany imposes no restrictions on the type or nationality of the applicant, but requires that the applicant have an administrative contact, who is authorized to represent the applicant, either established or domiciled in Germany.
Some companies seek domain name registrations in countries in order to protect their names or trademarks, even if those companies are not present in those countries. However, such a domain name registration will not be possible in a country which requires the registrant to have some form of legal presence. However, nearly all countries which have imposed such restrictions have taken steps to prevent cybersquatting, either by restricting the type or the number of domain names one may register.
At the same time, there are countries such as China which have no restrictions on the type or number of domain names, but instead register names on a first come, first served basis. Cybersquatters tend to be particularly active in those countries.
Although it is generally possible to buy domain names from third parties, this will not work if the purchaser would not have been able to register the domain name in the first place. The transfer of domain names is administered by the applicable country's registration authority. Transferring a domain from one domain holder to another entails a change in the domain's registered holder. A new holder must fulfill the same requirements established by the country for when applications for new registrations are submitted.
Michael J. Bevilacqua
This alert is provided with the understanding that it does not constitute the rendering of legal, tax or other professional advice or services by Hale and Dorr LLP or its attorneys.