Domain Names: A Practical Guide

Authors: Simon Halberstam, Joanne Brook, & Jonathan D.C. Turner



Publisher: Butterworth's Tolley

Reviewed by: Roger Burton West

This slim volume is intended primarily for lawyers expecting to be involved in domain name cases; it deals with the legal precedent covering domain names, procedural issues (just what is involved with a domain name registration), and current best practice. As such, it would also be useful to businessmen wishing to register a domain name with a minimum of disputation.

Ths book is split into six major parts: choosing and registering a domain name, selling or transferring a domain name, changing registration information, domain name disputes, frequently asked questions, and appendices.

The writing style is lucid throughout, though the flow of text is somewhat impaired by its being divided into short sections (very few longer than a page). Each section is uniquely numbered, making citation of this book a painless procedure.

The first part of the book introduces domain names in a non-technical way, and describes both the types of name that can be registered (including the misused country codes, such as .tv, becoming popular in some circles) and the companies available to assist with this. It also covers the registration of a domain name as a trademark: when it is wise to attempt this, when it is possible, and the way in which it should be done.

The second part covers the purchase of a domain name alr eady owned by another - the reasons why one would wish to, and the means by which one can do so. The second chapter deals with the mechanics of domain name transfers, whether purely between owners or between registrars, including best-practice notes on minimising the likelihood of a dispute. The final, very substantial, chapter concerns the valuation of a domain name, by categorising types of domain use (a taxonomy which deserves wider consideration) and by suggesting (with examples) a number of valuation procedures based on this division.

The third part consists of only a single chapter, explaining the mechanics of changing registration information for a domain (in essence, the contents of the whois record) when there is no transfer of ownership involved.

The fourth, and by far the largest, part of the book deals with domain name disputes: the reasons they arise, the main laws that are cited, and the policies used to resolve such disputes. As one might expect, there is substantial scope for "forum shopping" when considering the setting in which a dispute is to be heard, and this section goes into some detail on the relevant law: registered trade mark law from the EU and the USA is covered, with both infringement tests and defences, as is unfair competition law ("passing off", goodwill, and other such considerations). The dispute resolution policies used by ICANN (UDRP and STOP) and Nominet, including considerations of burden of proof and suggestions to minimise delay and disputation, are considered in some detail.

The fifth section, "FAQs", contains short descriptions of scenarios which the authors have encountered, or which they feel provide useful illustration of the system. While this is not of course legal advice in the strict sense, it does give a feeling for this area of law.

The appendices are reference material: a glossary of terms and abbreviations, ICANN's and Nominet's dispute resolution policies, and lists of relevant cases and legislation. Much of this is already available on the web, and the space could perhaps have been more usefully taken up with more detailed examinations of specific domain name disputes.

The principal failure of the book is that it is a snapshot of the current legal situation: it does not make any mention of the current trends in dispute resolution, but deals strictly with the present day. This is of course useful to the intended audience, but is likely to require frequent new editions of the book with substantial revision as procedures and precedents change. Further, it is natural that a publication such as this one, aimed at lawyers, will not mention the antipathy felt by many domain name holders to the legal system, though a brief consideration of this would surely be useful.

Overall, this is a useful guide for those not familiar with domain name procedures but who expect to become involved with them. While there are evident gaps in its coverage, these are in areas where lawyers will not generally be directly involved.