The notion of expanding an ecommerce business into additional countries is enticing for many merchants. Most every country, however, has its own top-level domain name. There's "co.uk" for the U.K., ".cn" for China, and ".fr" for France, as examples.
Should merchants interested in those countries secure their country code top-level domains — CCTLDs? And what should a merchant do if someone in a separate country maliciously attaches a local CCTLD to the merchant's business name? Just how are cross-border domain-name disputes resolved?
We asked all of those domain-name questions — and more — to Gretchen Olive. An attorney, she's director of policy and industry affairs for Corporation Service Company, a domain name and trademark service provider.
Practical eCommerce: Say a U.S.-based merchant has a successful niche ecommerce business. Should that merchant register the domain name with top-level domains in other countries?
Gretchen Olive: "It's a great question. It's often difficult when you start a company and you go and get that dotcom website. You don't necessarily know how successful you'll be, so you want to keep cost low and overhead low. So, you go and get that dotcom name, which is relatively inexpensive, but as your business begins to grow and the opportunity for doing business in other countries outside the U.S. becomes a real possibility, that's really when companies need to consider whether they should start securing their name in other country codes — CCTLDs, 'Country Code Top Level Domains.' Those are the domain names that are available in different countries.
"For example, for the U.K., you can get a '.co.uk' name. In China you can get a '.cn' name. When your business starts to take off, that's probably the right time to think about that — to look at where you might be doing business. It's a big world out there and there are over 250 country code domain names. It's not necessary or prudent for you to try to secure your name in all of them. It will be quite expensive, in fact. But you really might want to look to those markets that you think you will be selling into in the next one to three years."
PEC: When a merchant identifies those markets, how can the merchant know where to find the registrars in those countries?
Olive: "There are certainly local registrars in the different countries, but really when you start expanding your business and moving into these more international domain name registrations and issues, you're going to want to work with the domain name registrar that has global capabilities. Corporation Service Company, the company I work for, is in fact one of those registrars where we can register names for companies around the world. There are other ones that can do that also that are based right here in the United States. Merchants will want to work with somebody here in the U.S. if they're based in the U.S. so that the time zone and the language is easy to take care of.
PEC: How much does that cost? Please explain the process.
Olive: "Sure. One of the big challenges with those country code top-level domain names is that unlike the GTLDs — generic top-level domain names, the .com, the .net, the .org where there's a lot of uniformity — for the country codes, it's different in every country. The rules are different. The prices are different. It can be complicated. Sometimes you need a trademark to get a registration. Sometimes you need a local business registration. Sometimes you need a local presence or a local address. So, it's kind of hard to generalize. But for the most part the CCTLDs usually run from $100 to several hundred dollars. That's kind of the average range and while Corporation Service Company can certainly help you, it depends on your needs. If you just need one CCTLD, you may be best served by going to a registrar that offers these types of things online or if you need more comprehensive services, then probably Corporation Service Company is a good fit for you."
PEC: Changing directions, let's assume a merchant has a successful business here in the U.S. and a person or a company in another country registers the merchant's domain with the local CCTLD. Essentially, someone steals the merchant's name under the local top-level domain. What can a merchant do at that point?
Olive: "Now we're starting to move into the world of cyber-squatting and this is a big issue we hear often about in the news. Big and small companies deal with this issue. There are different remedies that can be sought. Some of it may depend on whether or not the name that you're using is trademarked. If it is trademarked, then you're typically afforded some additional protections under what's called dispute resolution policies that these individual country code top-level domains will likely have in place. Each country has different dispute policies, has different procedures for seeking relief, but typically if you're not trademarked, it may be very difficult to block another person from using your name in another country."
PEC: How are the disputes resolved now, even if a name is trademarked?
Olive: "Many of the dispute policies will look to see if there's a trademark, to look to see if the registration or the use of the domain name is being used in what they call bad faith, meaning the person registered it likely for either the purpose of resell to the person who has the name or to maybe divert revenue to themselves, to get an economic gain. There are different factors that are looked at to determine whether or not there is that what's called 'bad faith in user registration.'
"These dispute resolution policies usually have an administrative-type procedure where you file a complaint. It's not in a court. It's really with an arbitration group. You file a complaint. The other party who you're complaining against gets to answer that complaint and then the arbiter looks at just the papers. It's not like you have a day in court or anything like that. They look at the pleadings and they make a decision and they determine whether or not the person who you complained against should be able to keep the name or whether they should have to release the name and allow you to take ownership of it.
"Each country has their own dispute policies. Sometimes it's the registry itself; sometimes they designate groups like the World Intellectual Property Organization or WIPO or the National Arbitration Forum or there's other groups. It's a handful of well-known arbitration groups that have a lot of experience and history in handling domain disputes."
PEC: Are the registrars in different countries sensitive to those issues, or apathetic?
Olive: "It depends. There are different types or 'flavors' of registrars out there. There are some registrars that really just work with companies and law firms. That's exactly the type of registrar that Corporation Service Company is. We don't work with individuals that might have one or two domain names. We work for enterprises.
"Another flavor of registrar is a so-called 'retail registrar.' Those are typically the registrars that have an online portal that you can get an account with. By just simply tendering a credit card, they'll give you an account and you can register domain names that they offer. Typically, with retail registrars there's not a lot of human interaction and they're very self-service-oriented. So, they're not going to be particularly helpful in helping you understand what particular remedies might be available and in particular jurisdictions.
"It's really if you're a larger business, you're probably going to want to work with more of a registrar where you can have a point of contact, you can speak to a person and you can get them to guide you. Those registrars typically not only understand the procedures related to dispute resolution, but also want to help people who are being cyber-squatted against."
PEC: For smaller merchants that have cross-border domain issues, what company would you recommend to help them?
Olive: "Well, there are some popular registrars out there. Typically these retail registrars don't offer the full array of country code registrations. They offer what they can automates. But there are reputable companies out there, such as Network Solutions or eNom or Go Daddy."
PEC: Assume you're advising a small ecommerce business that has a successful niche, but it doesn't have a lot of money. It is interested in securing its name in top-level country codes around the world. What is the strategy for them?
Olive: "The first thing they'd want is think into the future and say, 'Where might I be successful in selling?' or, 'Where may I want to sell?' in one, three, five years. Identify those countries and then work with the registrars, understand what the rules are in each of those countries. You may find out that you may not be able to qualify for domain name registration in a particular country, which is you don't have a local presence or you don't have a trademark for business registration in that country. So, that may take a few off the top right away. The good news, however, is in those countries where there are other types of requirements, there is less likelihood of cyber-squatting because someone else would have to be able to come forward with that local presence or that trademark of that business registration to be able to meet the qualification for the domain name that you might be seeking.
"But once you can determine where you might do business and where you may qualify, then you should take and match that to your budget. Kind of a balance between risk, opportunity and budget and you can wade into it slowly and then if you are gaining ground as time goes on, then you can seek to get the additional registrations in countries that were lower on your priority list."
PEC: Is there a master list somewhere that has every legitimate worldwide registrar?
Olive: "There isn't a master list of every worldwide registrar. We've talked about two different types of domains. One is the generic top-level domain — the .com, .net, .org. We've talked about country codes domains — the .uk or the .fr. For generic names, there is a public posting on the ICANN website. You can look for a list of ICANN accredited registrars on that website. Those registrars are accredited with ICANN for the GTLDs, but many of them are also accredited on those country code domains as well. That might be a good place to start. If you're interested in an individual country, you can typically go to the website of each individual registry.
"But I think your readers will be much better served by starting at the ICANN website and working through the list of ICANN-accredited registrars. They would likely be able to find some registrars from those country codes there."