Domain name management usually sits outside the IP department with marketing and/or IT teams. Those departments may have been schooled in the need to consult the IP team as part of the domain name registration strategy, but what about decisions as to ongoing maintenance, gaps in protection or decisions to lapse registered domains?
We have written in the past of the need to audit trademark portfolios for value and efficiency, as a means to ensure a company’s IP portfolio accurately reflects and supports its current and future business strategy. However, trademark rights are not limited to the branding used in the physical world; company and product names also need to be proactively protected on the web.
Indeed, given how large a role the internet plays in all our daily lives, focused domain name management is arguably just as important to the success of a company’s brand protection and growth strategies. For this reason, we recommend that companies consider implementing the same IP management and protection strategies as used for trademarks for their domain names.
Know what you own
As IP professionals know all too well, careful planning is crucial when it comes to the registration and ongoing protection of a company’s intangible assets. Yet, few businesses have established a clear and consistent strategy for registering and renewing domain names. In this sense, the first step for any business should be to assess what has already been registered in light of the company’s brand portfolio. For example by linking domain name registrations to brand and product lines, in order to assess whether:
- the domain names accurately reflect the brand names and associated trademark registrations;
- there are any gaps in coverage (e.g. core brands, product lines or trademarks that do not have equivalent domain name registrations);
- domain name registrations are being maintained for products or trademarks that are no longer in use (bearing in mind there may be good reasons for doing so); and
- there is consistency in the registries used to register the company’s domain names (e.g. in terms of the choice between top-level (gTLD) or country-code (ccTLD) registrations).
In our experience, such an exercise is best undertaken by an IP professional in combination with a marketing specialist, or by an IP professional with specialist marketing knowledge.
Rationalising your assets
Domain name registrations may not be a major expense when assessed individually, but add them together and that picture will look very different. Even in the unlikely event that budgets aren’t tight, it’s nonetheless good business sense to rationalise a domain name portfolio in order to decrease costs and maximise protection. The exercise also facilitates future budgeting efforts, whether for new registrations or portfolio renewals.
The ultimate goal of any audit is to deliver a portfolio that creates value for a company. To achieve this, Novagraaf employs a three-step process that analyses existing assets to identify risks and opportunities; delivers the results in a way that is accessible for the entire business; and designs an implementation strategy that tackles the identified vulnerabilities.
Step 1: Analysis
Here, we collate an accurate picture of a company’s domain name registrations to establish key patterns; for example, are some gTLD or ccTLDs more popular than others? Are some brand names better protected? Are some trademark assets covered by domain name registrations at all? Are there any domain name registrations that are active but barely used?
Step 2: Co-ordination
We understand that decisions on domain name registration and maintenance are not the sole responsibility of the IP department. That’s why we always deliver our results in a way that also involves associated departments, such as IT or marketing. Their involvement is especially important when it comes to designing future registration strategies, which need alignment with marketing and IT activities if they are to achieve their potential online.
Step 3: Implementation
The purpose of the last step is to deliver a clear strategy for the organisation that sets goals and deliverables for the year ahead, and identifies priorities for action where vulnerabilities have been identified as part of the audit stage. Of course, undertaking an audit is only the first phase in the development of such a strategy; the results also need to be analysed and actioned.
Depending on how active your business needs to be in terms of identifying and acting against infringement activity online (including counterfeiting activity, cybersquatting and look-alike sites), this is likely to include the need to implement a domain name watching process in order to monitor core rights online, as well as to design a defence strategy for prioritising action. We recommend approaching this in two parts:
- Part 1 defines the domain names that are necessary to achieve a consistent and effective online presence, as well as the decisions that need to be made regarding the abandonment of obsolete registrations and the acquisition of new ones.
- Part 2 sets out the business’s future defence strategy and guidelines to inform future decision-making in light of common infringement situations. For instance, which domain names to monitor, and what action to take when infringement is identified; e.g. should you ‘ignore’, ‘monitor’, ‘buy back’, ‘send cease and desist’, ‘undertake UDRP action’ and so on.
Depending on the size of your portfolio, you may also wish to consider employing a (global or localised) domain name monitoring service. This can also be delivered by Novagraaf with legal opinion if you require additional guidance on your possible next steps.
This process of audit, co-ordination and implementation is of course never final, and any adopted strategy needs regular review and assessment if it is to evolve to support the business as it also evolves. At the minimum, we recommend a review (with the involvement of IT and marketing) on an annual basis. To ensure that these good intentions don’t slip, it’s also a good idea to schedule the domain name audit at the same time (or as part of) the wider trademark audit.
For further information on Novagraaf’s domain name management services, including auditing and monitoring, please speak to your Novagraaf attorney or contact us below.