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Domain Names

FACTSHEET

IMPORTANT ISSUES

What are Domain Names?

How to register your DNA. Before registeringB. Country Code Top Level Domains (ccTLD) registrationC. .lat Domain Names

How to protect your DNA. Preventive strategy: register your brands, company name,products, etc. as domain names.B. IPR protection strategyC. You may also validate your TM before the TMCH.D. Administrative actionsE. Legal actions

Related links & additional information

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Domain names (DN) are the human-friendly forms of Internet addresses, and are commonly used to find websites. There are no two identical DN, thus your DN is a unique identity by which Internet users may find you.

They could be divided into different categories:

• Top Level Domains (TLD): - Global Top Level Domains (gTLD): .com, .info, .int, .net, .edu, .gov., .mil

and .org.

- Country Code Top Level Domains (ccTLD): Among others: .ar, .br, .cl, .py, .uy, .ve.

• Second or Third Level Domains: edu.py.

A ccTLD is a country code top-level domain: These ccTLDs are independently administered by national registration authorities (Source: WIPO). For example: Comitê Gestor da Internet no Brazil or CGI through Núcleo de Informação e Coordenação do Ponto BR (NIC.br).

Benefits of registering your DN in Latin America:

• Enhance the local linkage: Users would associate your website with these countries.

• Improve web positioning (SEO) in these countries.

• Expand your audience: .com.br domains have grown dramatically in recent years because of the Internet penetration growth the country is experien-cing. Currently there are more than 3 million .br registered domains (Source: Dondominio.com).

• Competitiveness: Higher registration fees and limited number of accredited registrars (most of them only in Spanish) are a barrier for many companies, which bring owners who have already registered a DN to a privileged posi-tion.

• Prevent bad faith registrations

• Faster and cheaper dispute resolution: Trademark and TLD owners may benefit from ICANN’s Uniform Rapid Suspension (URS). It is usually faster than national legal proceedings and may be filed regardless of where the parties are located.

1. What are Domain Names?

Together with the .ar DN, National points offer a wide variety of DN, such us .net .ar, .org.ar or .tur.ar. Each of them has specific requirements. E.g: The use of .net.ar is subject to a prior registration at the National Communication Commission (Comisión Nacional de Comunicaciones).

TIPS and WATCH-OUTS!

• Look for previously registered Domain Names. No registration can be filed without performing a prior DN search. National points provide WHOIS-linked, free-access databases that ena-ble you to check whether the desired DN is already registered and when it could be available. Where your preferred option is already registered check if:

… the registrant uses it. There are companies that register a DN with no intention of using it themselves, but to resell it. You could check if there is inappropriate content or counter-feit products/services being offered on the website.

... the DN is on sale? If so, you may opt to buy it instead of starting a dispute resolution process. The price should be negotiated between you and the owner.

• Does any DN infringe my trademark? A third person may have registered your company’s name or trademark as a DN without your permission (“cybersquatting”). If this is so, you should ini-tiate a dispute resolution proceedings (Court or Alternative Dis-pute Resolution System).

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2. How to register your DN

A. Before registering

Prior to any DN registration, we highly recommend you establish a registration strategy according to your company’s interests. The following points may be very useful in this respect:

• In which DN am I interested? Have a clear idea about the DN and think of alternatives just in case they are not available an-ymore or they may pose an IPR infringement risk.

E.g. Your DN may be too long and a shorter form could be a good alternative (i.e. www.latam-ipr-hd.cl instead of www.lati-namerica-ipr-helpdesk.cl)

• What keywords are the most profitable ones (SEO): Take into account that the SEO may prioritize some terms depending on the country, which implies more visibility and income. Some of them may be used a lot (Watch out: too many competitors and saturation risk) or not (potential niche). Conduct a SEO analysis in order to define which words fit your marketing strategy.

• Is there any formal requirement? See if there is an extension limit or if certain symbols -which are commonly used in your mother tongue, like “â”- are to be rejected or substituted. E.g. In Argentina, DN shall have between 4 (minimum) and 19 (top) characters. Remember that the ‘http://´part and the ccTLD (i.e. .com.ar) are not included (example: www.latinamerica-ipr-help-desk.ar could not be registered, because it is composed of 20 characters).

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B. Country Code Top Level Domains (ccTLD) registration

Registering your Dn in the Latin american countries is very easy, totally automated and will take you only a few minutes.

• Where:Registration may be done directly before the Local compe-tent authority (normally, national internet network Center) or through domain name registrars which are companies accredi-ted by the internet Corporation for assigned names and num-bers (iCann).

as indicated, first you need to check if the selected Dn is avai-lable. You may do that in the official Local network informa-tion Center website or with the Whois database:

- argentina: https://nic.ar/ - Brazil: http://www.registrobrasil.com/ - Chile: http://www.nic.cl/ - Paraguay: http://www.nic.py/ - Uruguay: https://www.nic.uy/Registrar/

• How much does it cost?Compared to gTDL, these Dn are expensive. Prices range from 13 to 33€ for ccTLD per year. Fees may be consulted in the following links. They are all expressed in local currency, unless expressed ontherwise:

- argentina: https://nic.ar/nic-argentina/aranceles - Brazil: http://www.registrobrasil.com.br/tabela_preco.aspx - Chile: https://www.nic.cl/dominios/tarifas.html - Paraguay: http://www.nic.py/costos.php - Uruguay: https://www.nic.uy/Registrar/anexo4.htm - Venezuela: The fee appears once the Dn search is made.

Tax Unit (Unidad Tributaria or UT) may vary, but currently, its value is 127 bolivares (c.a. 18€).

Lack of use of a domain for a sufficiently long period of time may be considered evidence of a lack of right or legitimate interests. each case should be considered independently.

example: WiPo/D2000-0194 (recordati.com - domain name not used for 18 months).

source: WiPo

TIPS and WATCH-OUTS!

• Could that Dn infringe someone else’s Tm? Perform a trade-mark search to see if your Dn could violate an iPR owned by another person. if you find a potentially conflicting Tm, contact the owner to avoid disputes and/or think about an alternative Dn.

Thinkbig:don’tlimityouraudittoasinglecountry.De-signyourregistrationstrategytakingintoaccountavai-labilityandsuitabilityofthesameDNwithdifferentTDL.Example:Latinoamérica-ipr-helpdesk.arLatinoamérica-ipr-helpdesk.brLatinoamérica-ipr-helpdesk.uy

Do not forget that if a ccTLD is already registered, gTLD could be a perfect alternative (e.g. latinamerica-ipr-helpdesk.com)

TIPS and WATCH-OUTS!

Accredited registrars usually offer discounts if the registration extends over some consecutive years.

TIPS and WATCH-OUTS!

• Who can register?Any natural or legal person can register a DN either directly before the competent institution or use an accredited registrar. In any case, the applicant must electronically sign an agree-ment accepting the local DN regulation. If you opt to register before the NICs, you just need to create your own account and submit the requested information.

If you opt to use a registrar’s service, they act on your behalf and will let you know which documents and info you need to attach.

In some cases, foreign companies have to meet certain additional requirements.

In Brazil, EU SMEs must appoint a local representative in order to register a domain name.br.

For further details about the documents the EU SME should submit, please check the Brazil NIC Website (in Portuguese).

In Argentina, EU SMEs must submit online a scanned copy of the following documents:

• a notarized copy of a validation certificate for foreign companies (DPJE Form)

• certificate of authentication of signature (certificate of authentication of signature (duly legalised pursuant the Hague Convention of 5th October 1951).

Further information about it in the Argentina NIC website (In Spanish).In Paraguay, EU SMEs must appoint a local representative.

TIPS and WATCH-OUTS!

C. .lat Domain Names

Since 2015, .lat domains are available. However, only validated trademarks got first priority in registration during the Sunrise period (16th February – 16th April 2015), after which everybody could apply for them.

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B. IPR protection strategy

Remember that the general rule is the first-to-file principle. So, the sooner you register, the less your potential competitors could harm you.

The latin America IPR SME Helpdesk offers free of charge, fast and entirely confidential first-line support on IP matters for European SMEs, thus facilitating the expansion and development of Euro-pean SMEs in Latin America.

For further details visit the Latin America IPR SME Helpdesk web-site: www.latinamerica-ipr-helpdesk.eu/

C. You may also validate your TM before the TMCH

The ICANN’s specialized database provides users with the TM noti-fication service, which allows accredited TM holders to be notified every time a potential infringing DN -containing your trademarked name- is being applied for as a DN, so they can react accordingly (i.e. legal actions).

EU DN registrants are increasingly receiving fraudulent emails of fake registrars claiming that another company has just attempted to register a DN before them which contains –or is very similar to- the European business domain owner’s trademark. These phenomena are known as DN registration slams and DN renewal slams.

Check it out carefully and if you are sure about the fake character of it, ignore and/or inform the Local NIC about the incident.

Where there is any doubt, contact your registrar and seek legal advice.

TIPS and WATCH-OUTS!

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3. How to protect your DN

A good DN registration strategy may help you minimize the impact of the many threats to which your DN and IPR are exposed.

Bad faith-registrants seeking to register your trademark -or a misspelling version of it- as part of the DN are quite usual. They get these DN to resell them or to redirect the traffic to another website. They may also use it to sell counterfeit products or servi-ces.

These practices are known as Typosquatting and Cybersquatting and they are very common, but both of them can be avoided by being proactive.

A gTLD (e.g. example.com) or any other DN (e.g. example.uy) does not confer on you any priority right over the other ccTLD (e.g. example.ar).

TIPS and WATCH-OUTS!

A. Preventive strategy: register your brands, company name, products, etc. as domain names.

Remember that the general rule is the first-to-file principle. So, the more and sooner you register, the less your potential competitors could harm you.

There are some exceptions: under certain conditions the DN could be recovered by the legitimate owner (e.g. IPR infringement) or re-gistration is subject to specific conditions (e.g sunrise registration period).

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D. Administrative actions

If you consider that a DN has been registered in bad faith, you may start the administrative dispute resolution proceeding before the Dispute Resolution Service Provider (DRSP). Together with the registration organisms mentioned above (i.e. NIC Argentina), there are additional approved DRSP (i.e. In Brazil there are Associação Brasileira da Propriedade Intelectual - ABPI, Câmara de Comércio Brasil-Canadá - CCBC and the World Intellectual Property Organi-zation - WIPO).

The processes for these will depend on the rules of that country’s registry, but they are normally very similar to ICANN’s.

When is a DN registration considered abusive?

There are three cumulative criteria:

• DN is identical or similar and may cause confusion in relation to my trademark;

• Lack of DN’s owner right or legitimate interest as to the con-flicting DN; and

• The DN has been registered and is being used in bad faith.

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After submitting the required documents (see below), and after you pay the fee, the case will be studied, the owner of the infrin-ging DN notified and questioned.

• Fee proof of payment

• Dispute Resolution Form: All the Latin America countries NIC provide general models that can be downloaded from their websites.

• Identification documents

• Evidence of the abuse (i.e. NIF certified photocopy, trademark certification, screenprints of the website, qualified testimonials, etc.)

Once the dispute has started formally, the DN will be blocked. The owner can thus modify the content of the website but it cannot be transferred to another person.

Duration of the process may vary from case to case, but a 60 days period could be considered reasonable.).

E. Legal actions

You can initiate a lawsuit in court before (i.e. you do not trust the competent DRSP)or after the administrative proceeding (i.e. you are not satisfied with the outcome).

Needless to say that this is normally more expensive, implies legal assistance and takes more time.

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WIPO mediation and arbitration center: http://www.wipo.int/amc/en/

WIPO’s Domain Names FAQS:http://www.wipo.int/amc/en/center/faq/domains.html#4

Uniform Domain Name Dispute Resolution Policy’s examples of registration and use in bad faith: https://www.icann.org/resources/pages/policy-2012-02-25-en#4aiii

4. Related links & additional information

Further information about Domain Names inLatin America can be found on our webpage. Do not hesitate to contact us if you need more information about this subject:www.latinamerica-ipr-helpdesk.eu/

Additional links:

http://www.lactld.org/http://www.iana.org/https://www.icann.org/

Iana’s rootzone database:https://www.iana.org/domains/root/db

Trademark Clearing House guide on how to validate your trademark for .lat DN registration: http://www.trademark-clearinghouse.com/content/priority-registration-trademark-holder

Tm Service Claim:http://www.trademark-clearinghouse.com/content/claims-services

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www.latinamerica-ipr-helpdesk.eu

ABOUT LATIN AMERICA IPR SME HELPDESK:The Latin America IPR SME Helpdesk offers free of charge, first-line support on IP and IP rights matters to facilitate the expansion of European SmEs (EU SmEs and SmEs from the Associated countries) already established at, or working with entities in Latin America as well as those potentially interested in establishing commercial and R&D activities and ventures in these countries.

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Disclaimer:The Latin America IPR SmE Helpdesk is a free service which provides pract ical , object ive and factual information aimed to help European SmEs understand business tools fo r d e v e l o p i n g I P R v a l u e a n d managing risk. The services are not of a legal or advisory nature and no responsibility is accepted for the results of any actions made on the basis of its services. The content and opinions expressed are those of the authors and do not necessarily represent the views of the European Commission and/or the Executive Agency for Small and medium-sized Enterprises or any other body of the European Union. Before taking specific actions in relation to IPR protection or enforcement all customers are advised to seek independent advice. Neither the European Commission nor the Agency may be held responsible for the use which may be made of the information contained therein.

Last update: June 2017

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