INTA - Domain Name

Suggestions and Tips:

1. Make sure that the client has the country and country code correct – how many of you noticed that .BL is not the correct country code designation? Belarus’ ISO country code/ccTLD designation is .BY!!!

2. If you notice a discrepancy like this, particularly if the website seems inaccessible, consider whether the domain represents an alternative root address and check —If you are dealing with an alt root, know what that means and what the implications are, if any (likely not the case here if the disputed website is clearly widely accessible, including to the client!).

3. Once you have determined what ccTLD you are actually dealing with, find out whether the ccTLD has UDRP or another ADR policy, or whether the country in question has a “usable” anticybersquatting statute – if it is ultimately not possible to locate the domain name registrant, it may still be possible to initiate proceedings against, and seek the transfer of, the domain name itself.

4. Determine whether the ccTLD has a relationship with ICANN – may be possible to seek help from ICANN (ICANN has a Registrar Liaison who may be willing or able to work with the ccTLD manager to identify the Registrar in question, and possibly deal with the Registrar to obtain registrant information).

5. Can also attempt to contact the ccTLD manager directly and ask for the contact information for the registrant. Quote RFC 1591, which suggests that registration authorities should maintain and provide such information when disputes arise.

6. Most obvious solution is to attempt to locate the operator of the website—trace the IP address of its nameserver in the DNS using a commercially available lookup program/appropriate RIR database lookups, to an ISP – hopefully the ISP is in a more “hospitable” jurisdiction, possibly even in the US. Contact the ISP and attempt to obtain contact information for the registrant, see if they are willing to cooperate in suspending the domain or taking down the website. Perhaps the ISP has an acceptable use policy that is being violated and thereby could be convinced to take down the website voluntarily. If the ISP is uncooperative, but is in a “convenient” jurisdiction, you may have at least found one possible defendant. However, it is probable that any person you may be able to locate in this manner will not be in a “convenient” jurisdiction – particularly if they are deliberately trying to evade discovery by choosing .by and/or a non-accredited registrar. You will likely have to look for another solution.

7. It may be possible to discover indirect information about the operator of the website by trying to order product through the offending website - while you may not be able to pinpoint the actual location of the website operator and his computer, you may be able to uncover information about where or who the vendor’s supplier or “fulfilment house” is – such a person would have a direct connection to the website operator, and is another potential defendant against whom action could be taken to compel disclosure of the website operator, particularly if they are located in the U.S. or some other “reasonable” jurisdiction – chances are if they are targeting your market, then they, or at least the source of the products, is going to be located there. Can try to do this directly, or through a private investigator, who may also be aware of technological alternatives for collecting information about the “middleman” or even the website operator – i.e. spyware-like software? (Just remember spyware may be illegal in some countries!)

8. If none of the foregoing avenues of inquiry are leading to answers, the scale of the infringing activity and the amount of harm being suffered by the client may warrant commencing legal action against parties higher up in the contractual hierarchy – ICANN, Regional Internet Registry etc. – while this avenue is a remote one at best, it may be worth trying to persuade a U.S. court to help stop the offending activity at the very top of the chain - ICANN is contractually related not only to the gTLD registries and accredited gTLD registrars, but also to IANA (which oversees the delegation of ccTLDs, as well as the allocation of IP addresses to RIRs) and the Regional Internet Registries, who in turn have relationships with the country registries and other users to whom they sub-delegate resources (IP addresses etc.). It might be possible to obtain a restraining order (or some other type or order) in the United States, or in the RIR’s jurisdiction, to try to block the website, even if the registrant and its location is unknown.

9. You can consider approaching the government associated with the ccTLD, possibly through WIPO, or ICANN (if the government has a GAC representative – Belarus currently does not).

10. You can consider actions to prevent the importation of infringing products if national legislation so allows.

11. Remember, there is probably no definitive answer; the fact pattern could be considerably more complicated; for example, if you are dealing with forged IP addresses etc., the chances of locating the registrant have just decreased exponentially. The above are suggestions and tips as to where to begin.

Thank you.

For further information, please see Jonathan Cohen’s 2007 INTA Course Materials on Domain Names / Jurisdiction

INTERNATIONAL INTERNET DOMAIN NAME AND TRADE-MARK STRATEGY