Domain names – Corporate Assets?

It has been long considered by businesses as well as declared in courts across various jurisdictions by adjudicating authorities that some “domain names” can indeed become part of the corporate assets and they, like any other property (e.g logos, symbols, brand names etc.), can also assume trademark like qualities thus capable of either being registered as a “trademark” or if unregistered being protected as a proprietary mark by the law of passing off. A domain name, which is not usually generic in nature, and contains with it some attributable reputation or goodwill regarding either the service or a product provided by the domain owner or represents a certain level of assurance or credibility about the brand to the wider audience, attains “trademark” like qualities and hence it is widely accepted that domain names can, considering some requirements are fulfilled, become almost like a “corporate asset”.

 

Whether it is the WIPO Panel acting under the UDRP Policy (adopted by ICANN) to adjudicate international domain disputes or even national courts with competent jurisdiction judging on such matters, it has been well settled that corporate entities registering domain names containing the “mark” or “brand” of their business would inadvertently end up attributing the trademark qualities to even the registered domain name. For example when Microsoft as one of the most popular brands in information technology launches a portal with a domain name including the term “Microsoft”, the domain name undoubtedly ends up inheriting the intellectual property rights that the term “Microsoft” already had been bestowed with. And in some instances where a corporate team invents a word and then uses it as part of the domain name, it might also be that the domain name becomes a “brand” only after the website that the  URL (containing the domain name) point to ends up becoming popular. For example “Rediff” is an invented term coined by its backing corporate team but the reputation and goodwill attributed to it emanates primarily from the services and products that Rediff has been providing on its portal. Rediff has significant popularity among the Indian online email users as well as IM service users. So “rediff.com” would not necessarily have trademark like qualities on the day it is registered but over a period of time (as is the case here) ends up having tremendous value and IP rights thus ensuring that anyone who tries to abuse these rights by choosing a deceptively similar domain name ends up becoming an infringer.

So it is well settled that “domain names” can well be corporate assets. But the question that seems to be doing the rounds in some corner of my head is a little strange and fictional. Domain names are technically speaking “registration agreements” with the accredited Registrar which provides the domain registrant the rights over the domain name for a period of 12 (twelve) months. As is everyone aware the rights can be renewed and extended for a further period of 12 months subsequent to the payment of the registration fee and this process can be perpetually repeated to ensure the registration does not change hands. The question that I wish to explore is that if domain name registrations are mere license agreements to use the domain name for a period of 12 months does it not make it more like a leave and license agreement? If domain name registrations are mere leave and license agreements, can domain names qualify as “corporate assets”? Is it not true that technically a domain name owner is not really its owner but only a registrant? Of course I will see many opposing views and comments here as the concept of domain names as corporate assets has been well established and enshrined in the laws of many countries but it is always worth reviewing the question when the answer is all too well known. Does it not give it a fresh perspective?

Come on bloggers, start writing! I am all ears for your views.

– Misum Hossain

Global School of Tech Juris

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