Monitoring your brand online


For companies with a global presence, managing an international domain name portfolio has become an increasingly complex and important challenge, explains Elisa Cooper.

For companies with a global presence, managing an international domain name portfolio has become an increasingly complex and important challenge, explains Elisa Cooper.

The world of domains continues to change at an alarming pace. With more than 250 ccTLDs and the arrival of new gTLDs expected next year, intellectual property professionals are forced to make important decisions daily about where, when and how to register domain names.

Although domain names are often managed in a manner similar to trademarks, the complexities associated with domain names are far more intricate. Unlike trademarks, domain name restrictions and requirements change rapidly, often making it difficult to stay abreast of these occurrences. Domains that are not securely managed are also at risk of hijackings, unintended expiration or erroneous mistakes, all of which can lead to website downtime and loss of consumer confidence.

To effectively manage domain portfolios, companies must define corporate online objectives, implement policies and procedures, consolidate and centrally manage domains, take special care with highly traffi cked and missioncritical domains, and employ a proactive policing and recovery strategy.

Defining objectives

Defining corporate online objectives is the fi rst step in creating a comprehensive domain portfolio. Direction on how to build, maintain and protect a domain portfolio may come from marketing, sales or even the board of directors—depending on the type of business and the company’s requirements for online exposure or protection

For example, online retailers oft en feel compelled to register their key brands worldwide—regardless of where they conduct business—because their domain names are so integral to their ongoing operations. Conversely, a brick and mortar retailer may decide that it is only important to register brands as domains in countries where it currently conducts business.

When devising a strategy, companies should take into consideration names that the company may want to use in the future, diff erent geographical regions in which they do business, or geographical regions where they may consider doing business in the future. But it’s important to remember that many countries have restrictions such as local presence requirements for registration.

Policies and procedures

As changes to domain registration rules and requirements can happen quickly and oft en without warning, it is especially important to create enterprise-wide policies and procedures covering who can register domains, and how ownership information should appear. In particular, it is important to determine a preferred ‘administrative contact’. This ‘administrative contact’, which appears on the domain ownership record (also known as the Whois record), is generally the recipient of renewal and expiration notices.

Consequently, problems can arise if an individual’s information is used when that employee leaves the company and their email accounts are deactivated. Also, unauthorised transfers can occur if emails are not monitored. Using a company-controlled email alias such as ‘’, these problems can be avoided.

In addition to setting up role-based administrative contacts, it is necessary to set standards for how registrant, technical and billing data shouldappear in Whois records. It is critical that this information is accurate according to ICANN, the governing body for all gTLD registrations.

It is also important to decide who in the company should be permitted to approve orders for new domain names, renewals and modifi cations. If more than one person is granted the ability to make changes, it is still advised that a central point of contact is tasked to review and approve all orders. Th is central point of contact can either be in-house or outside intellectual property counsel.

Determining where domain names should ‘point’ is another critical decision that should be addressed. For example, if an Internet user types in a domain name, where will that user go? Should it resolve to a main corporate site, an e-commerce site or an HR site? Many companies match foreign-language domain names (IDNs) to language-specifi c websites.

Keeping a list of brands to be registered regardless of geographic location can also decrease the likelihood that a name will be lost to a cybersquatter. Th is is especially true given that many new ccTLD off erings are announced and made available with very little notice.

Consolidate and manage domains

Consolidating a corporate domain portfolio begins with identifying all of the domain names and variations registered for a company and its products, services, trademarks and brands. Once these domains have been identifi ed, they should be consolidated into a single repository for further review.

While this may seem like a fairly simple task, doing so may actually be quite cumbersome due to the fact that various departments and subsidiaries may have registered domain names directly at some point in the past. Using a Reverse Whois tool provides one method for uncovering domains that belong to your organisation. ‘Reverse Whois’ tools enable the identifi cation of domain names by searching for any term within a Whois record, including contact, company, email, address and name server.

Contacting likely registrants is another method for uncovering domain names. Likely registrants of domains include: marketing managers, web administrators, product managers and legal.

By consolidating domain portfolios, intellectual property professionals can:

• Gain visibility into their entire portfolio

• Work with a single registrar that understands their company’s corporate online objectives

• Compare trademark registrations against all existing domain registrations to identify gaps

• Reduce the costs of working with multiple registrars.

Protect highly trafficked and mission-critical domains

Undoubtedly some domains are more valuable than others. Clearly, domains that point to highly trafficked sites, corporate websites and e-commerce sites are more valuable than those registered in an eff ort to protect against cybersquatting or typosquatting.

For highly trafficked domains, it is recommended that special care be taken. Specifi cally, thesedomains should be registered for the maximum allowable term. For gTLDs, this is 10 years. Of course, domains that are mission critical should be set to automatically renew each year, and most domain registration portals provide this functionality.

It is vital that domains are secured at both the registry and registrar level. All domains should be locked, with the highest locking levels applied to mission-critical domains. It is also essential to select a hardened and experienced registrar, that will prevent attacks from occurring in the fi rst place, and is equipped to quickly and eff ectively react to any attacks that might occur.

Vigilance is mandatory when it comes to securing critical assets.

Monitor for abuse and recover when necessary

Registering domains should be viewed as a first line of defence against brand abuse. Monitoring domain name registrations of others provides a second line of defence.

Domain name monitoring can be accomplished by searching through zone fi les for newly added domain names that contain a particular search term. Theere are a number of services available that can provide this information on a daily basis. Important features of a domain name monitoring service include:

• Notification of newly registered domains and newly dropped domains

• Th e ability to create exclusion lists and search zone files using wildcards

• The status of each reported domain (active/ inactive/dropped)

• A live link for each domain

• A live link to the Whois record for each domain.

By monitoring domain registrations, companies can proactively anticipate potential abuse and take action to recover domains if necessary.

One of the more common approaches for recovering domains is through ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). Eighty-five percent of all UDRP cases are held in favour of the trademark holder, and the fees and costs are typically less than $10,000. The average time to resolution is approximately eight weeks. As a result, anonymous acquisition makes more sense in many cases.

To win a UDRP, the complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Although trademark registration is not required, it is helpful. It must also be proven that the registrant has no rights or legitimate interest in the name. Finally, bad faith registration and use must be shown. Use can be established with attempts to sell, routing to adult sites or using the domain name to draw traffi c meant for the complainant’s site.

Recovering domains through anonymous acquisition is often preferable if UDRP or legal proceedings (and related publicity) are unattractive or inappropriate, and expeditious recovery is required. A third party that off ers domain acquisition services may be able to acquire the domain at a signifi cantly reduced rate.

If time is not of concern, another approach is to monitor expiration dates and to register the name should it become available. This approachshould only be used if the name is a ‘nice to have’ as opposed to a ‘must have’.


In the past, corporations struggled with managing global domain name portfolios due to decentralised account management and lack of standardised procedures. This lack of centralisation and co-ordination resulted in the expiration of domain names, failure to register key domain names and the loss of domain names to cybersquatters.

Clearly, more emphasis is being placed on the management of domains as they are now viewed as important intellectual property. As the industry continues to mature and new gTLDs are launched, the management of large portfolios will likely become even more complex. Protecting domains from cybersquatters and phishers will continue to be a priority as many wide-open namespaces will become available with the expected launch of new gTLDs.

Whatever the future may bring for domains, of one thing we can be certain: domain name management is critical for both protecting against brand abuse and trademark dilution, as well as promoting brands to a worldwide audience. Elisa Cooper is director of product marketing at MarkMonitor. She can be contacted at:

This article was first published on 01 January 2011 in World IP Review

gtlds, cybersquatters, icann, udrp, elisa cooper

Trademarks and Brands Online